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Intellectual Property Law

AUF School of Law Atty. Eric Recalde

PRIORITY IN ADOPTION AND USE/ • From 1946 to 1955 Ng Kian Giab's family
EXCLUSIVE USE merely bought ready made polo shirts and
undershirts to each of which they then
sewed the label "Marca Piña" before resale
CHUNG TE vs. NG KIAN GIAB and THE to the public.
HONORABLE DIRECTOR OF PATENTS
• In 1955 the father transferred the business
G.R. No. L-23791. November 23, 1966
to Ng Kian Kee, who put up a factory — the
Facts:
Hongkong T-Shirt Manufacturer — and
Chung Te's contention:
started producing undershirts bearing the
• March 13, 1957 an application for the trademark. When he decided to continue his
registration of the same trademark "MARCA studies in 1957, he, in turn, transferred the
PIÑA. and Representation" was filed by business to respondent.
Chung Te (Application No. 5544), although it Decision of the Director of Patents
was subsequently considered abandoned
• Director of Patents, however, declared that
by reason of his failure to answer the
neither of them "satisfactorily adduced
communication of the Principal Trademark
definite and conclusive proof of their
Examiner dated September 25, 1957.
asserted dates of first use of the trademark
• Chung Te claims that since January 8, 1951 "Marca Piña"; and relying on the rule that "in
he had been using the trademark on inter plates cases, when neither of the
undershirts (de hilo), T-shirts, and baby parties have (has) satisfactorily proven the
dresses. date of first use alleged in their applications,
• For a long time petitioner was the such date shall be confined to the filing date
purchasing agent for his father-in-law, who of the said application,” and granted the
owned the Liong Bee Shirt Factory. application of senior party applicant Ng Kian
Afterwards he decided to go into the same Giab.
business for himself. His father-in-law, who • Respondent Director disregarded all the
theretofore had been using the tr evidence submitted by both parties and
• the factory became a member of the relied exclusively on the filing dates of the
Philippine Chinese Underwear applications in reaching his conclusion as to
Manufacturers Association. According to the dates of first use by the senior party
Juanito Vitug, secretary of the association, applicant and the junior party applicant,
before a firm was admitted as member it respectively.
was required to inform the association of the • Director of Patents gave due course to the
trademark it was using to identify its application of Ng Kian Giab for registration
products; and he found that among the files of the trademark "Marca Piña" and
of the association the sample labels "Marca representation thereof, and rejected Chung
Piña" submitted by petitioner when he Te's own application for registration of the
applied for membership were included. same trademark and a similar
• Petitioner also applied for business permit representation.
(LIONG SUN Shirt Factory) It appears from Issue/ Answer:
his application that he had commenced • Who between Chu Teng and Ng Kian Gab
business on February 1, 1952. should be allowed to register the trademark
Ng Kian Giab's contention: "Marca Piña"? / Chung Te
• Ng Kian Giab stated in his application that Ratio Decidendi:
he had been using the trademark on • Where an applicant for registration of a
undershirts since December 6, 1955. trademark states under oath the date of his
• At the hearing he sought to prove that his earliest use, and later on he wishes to carry
family had been using it since 1946.

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

back his first date of use to an earlier date he accused of fraudulently appropriating
he then takes on the greater burden of and registering the same with full
presenting "clear and convincing evidence" knowledge that he was not the owner.
of adoption and use as of that earlier date. • The application was filed on February 20 of
• testimonial evidence presented by Ng Kian that year, the use of such trademark on his
Giab and their witnesses falls short of the product consisting of dyestuffs allegedly
kind of proof required of respondent. It is dating back to 1956.
doubtful that respondent's father would pay • His firm allegedly is engaged in the
Genoveva Santos as high as P0.02 per manufacture of dyestuff, crayone,
label (which did not even bear his name) on stationery, and school supplies, and in the
polo shirts which he had purchased ready- sale of dyestuff the trademark LION and
made, and which he could very well have TIGER label has been adopted since 1952.
sold without any label. • The witness identified a LION-TIGER label
• The documentary evidence show clearly being used by Petitioner. It was designed for
that respondent's use began only in 1955. Venus Commercial in 1952 by Mr.
• petitioner has established prior use and Gaudencio Eugenio, a free lance artist who
adoption of the questioned trademark, for confirmed this fact by testifying that around
which reason he and not respondent Ng June, 1952, upon request of Sy Chang, he
Giab is the one entitled to registration designed a label for dyestuff, the LION &
thereof. TIGER label, for which he was duly
• the decision of the Director of Patents is compensated.
reversed. Petitioner is adjudged prior user • The design was in turn first printed by
of the trademark MARCA PIÑA and Majestic Press owned by the other witness,
representation thereof, and its registration in Antonio T. Cheng, who affirmed that he
his name is ordered knew Venus Commercial because of a
• Where the testimonial evidence for both printing job in 1952 pertaining to the 10,000
parties has been entirely disregarded, and pieces of LION-TIGER label.
reliance is placed solely on the filing dates Gaw Liu's contention:
of the applications as proof of the respective • Gaw Liu himself testified that he was
dates of first use, then the abandoned engaged in chemical manufacturing since
application filed by the junior party applicant the Japanese occupation, with offices at
becomes cogent evidence to show that he Magdalena St., Manila.
first used the trademark as of the date of its • in 1947, he used and adopted the brand
filing TIGER for his dyestuff and later, he
allegedly adopted LION & TIGER, made
SY CHANG vs. GAW LIU some sales, as shown by an invoice dated
G.R. No. L-29123. March 29, 1972 December 10, 1951 issued to Pue Chong
Facts: Beng of Zamboanga.
• a petition was filed by Sy Chang to cancel a • He confirmed having known Venus
certificate of registration No. 10637, of a Commercial in 1951 or 1952 through the
trademark, LION and TIGER issued by the owner he knew only as 'Mr. Cao' who used
Philippines Patent Office on December 12, to offer him discarded materials such as
1963 in favor of respondent Gaw Liu dyestuff and empty cans. He also admitted
• grounds: he had previously used such a knowing witness Sy Chang who worked for
trademark since 1952 on aniline basic Venus Commercial, but only after 1952, but
colors or goods similar to those he had never been inside the firm's
manufactured or sold by respondent whom establishment; neither had he received any

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

calendar from said firm. facts as presented though, the conclusion


• According to him, Venus Commercial sold reached is that the presumption had been
dyestuff in 1950, or 1951, or 1952, using rebutted, petitioner having shown "that at
another brand he described as a lady the time the respondent filed his application
carrying on her back two children holding for registration and for years prior thereto,
two rotating small drums. After it stopped he was not the exclusive user of the
selling dyestuff of the 'Lady' brand, they trademark LION-TIGER. The burden of
started using the LION brand in 1952 or going forward is thus shifted to the
1953. respondent who must show that the subject
• Asked how he advertised his trademark matter of registration is, in fact, distinctive of
LION-TIGER, the Respondent said that it his goods.
was a small business so he did not • the record is wanting in proof sufficient to
advertise it either by newspaper, radio, or show that Respondent-Registrant has
handbills, but he sold it cheaper to convince actually and substantially adopted and used
people to use it the trademark so as to show that his firm
• both parties admitted that there was an was the source or origin of his dyestuff.
arranged meeting between them to reach • it has been admitted by respondent that he
an amicable settlement with regard the never advertised the trademark, either by
trademark Lion & Tiger, but such meeting newspaper, radio or handbills. He was not
never pushed through as Gaw Liu is asking able to show extensive sales, except those
for 80,000 as value for the trademark which made by him to Pua Chong Beng, which,
was then registered in his name however, may be considered as negligible
Issue: and sporadic.
• WON Gaw Liu had proven that he has prior • No further sales were made as the record
use of the trademark Lion and Tiger as eloquently shows. These matters are
oppose to the claim of Sy Chang necessary especially when Respondent
Answer: alleges use on a date earlier than that
• negative. He never presented proof alleged in his application, in which case his
required by law to invest him with exclusive, evidence, testimonial or documentary, must
continuous adoption and use of the be definite, clear, and free from doubt or
trademark which should consist in, inter alia, inconsistencies.
considerable sale since his adoption thereof • Under the Rules of Practice in Trademark
combined with promotional work suitable to Cases (Rule 173), in all inter partes
popularize the trademark. proceedings, the allegation of date of use in
Ratio Decidendi: the application for registration of the
• Gaw Liu was asked to explain why he applicant or of the registrant cannot be used
claimed to have used the trademark in 1947 as evidence in behalf of the party making
when, according to his application he first the same. In case no testimony is taken as
used it in commerce on June 10, 1956. He to the date of use, the party will be limited to
explained that it was because the Patent the filing of the application as the date of his
Office required two months use at the time first use.
the application was filed • because the Respondent was not able to
• Where the rebuttable character of the prove his date of first use in commerce of
validity of registration of the trademark the trademark LION-TIGER he is deemed to
registered in the name of respondent is put have used it on the filing date of his
in issue, the evidentiary burden of proving application which is February 20, 1963
invalidity rests upon the petitioner. From the • the superior right of petitioner in view of

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

what the decision called "the chain of 1975, that Kaisha filed a petition for
circumstances" favorable to him namely his cancellation after a lapse of almost seven
"use thereof in commerce, and a systematic (7) years.
preservation of the records to support his • CA held that the equitable principles of
claim of continuous use, such as the making laches, estoppel and acquiescence would
of the design, the printing of the design on not apply in this case for it has not been
labels, the actual use on the goods, shown that Kaisha abandoned the use of
advertising in calendars, and other acts of the trademark
dominion, such as the filing of this petition • CA further held that Pagasa knew of the use
for cancellation. of trademark "YKK" by respondent which
• The Certificate of Registration No. 10637 are the initials of the company, and
issued to Gaw Liu for the trademark LION & notwithstanding this knowledge it later on
TIGER is "ordered cancelled. sought trade registration of the same
trademark in its favor.
PAGASA INDUSTRIAL CORPORATION vs. CA Issue/Answer:
G.R. No. L-54158. November 19, 1982 • WON it is correct to say that the equitable
Facts: principles of laches, estoppel and
• Sometime on November 9, 1961, the acquiescence cannot be applied in the
Philippines Patent Office issued Certificate instant case/ negative (Sec. 9, Trademark
of Registration No. 9331 in favor of Law)
respondent Kaisha covering the trademark • WON it is the fact of registration that vests
"YKK" (Yoshida Kogyo Kabushiki) for slide one's right to a trademark/ negative (there
fasteners and zippers in class 41. must be prior commercial use)
• 5 1/2 years after respondent's registration Ratio Decidendi:
Pagasa filed an application for registration • The Director of Patents, stressed in his
of exactly the same or identical trademark of order of cancellation that the trademarks in
"YKK" for zippers under class 41 which was question are "confusingly similar". However,
allowed on April 4, 1968 with Certificate of the discussion made by the Senior
Registration No. 13756. Trademark Examiner of the Patents Office
• Alleging that both trademark ("YKK") are regarding the registrability of the mark
confusingly similar, being used on similar revealed that "the concurrent registration of
products under the same classification of subject mark is not likely to cause
goods, respondent Kaisha filed with the purchasers confusion, mistake or
Director of Patents a petition for cancellation deception," since the "over-all commercial
of petitioner's registration of exactly the impression of the marks are grossly
same trademark "YKK". different and used on goods not only falling
• Director of Patents cancelled Registration under different classification, but also
No. 13756 in the name of Pagasa based on possessing different descriptive properties.
Section 4 (d) of RA 166, as amended (An • The products are sold through different
Act to Provide for the Registration and trade channels or cutlets and are non-
Protection of Trade-Marks, Trade Names competing.
and Service-Marks; etc.) • The Trademark Law is very clear. It requires
• on appeal to CA, Pagasa argued that there actual commercial use of the mark prior to
was laches on the part of Kaisha its registration. There is no dispute that
considering that notwithstanding the fact respondent corporation was the first
that the trademark was registered for the registrant, yet it failed to fully substantiate its
use of petitioner, it was not until January 23, claim that it used in trade or business in the

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

Philippines the subject mark; it did not xxx xxx xxx


present proof to invest it with exclusive, "(d) Consists of or comprises a mark or trade name
which so resembles a mark or trade name registered in the
continuous adoption of the trademark which
Philippines or a mark trade name previously used in the
should consist among others, of Philippines by another and not abandoned as to be likely,
considerable sales since its first use. when applied to or used in connection with the goods,
• The invoices submitted by respondent business or services of the applicant, to cause confusion or
which were dated way back in 1957 show mistake or to deceive purchasers; or x x x
that the zippers sent to the Philippines were
section 2, Trademark Law
to be used as "samples" and "of no see page 11
commercial value." The evidence for
respondent must be clear, definite and free Section 9-A of the Trademark Law
from inconsistencies. "Equitable principles to govern proceedings: In opposition
• An unreasonable length of time had already proceedings and all other inter partes proceedings in the
Patent Office under this Act, equitable principle of laches,
passed before respondent asserted its right estoppel and acquiescence where applicable, may be
to the trademark. There is a presumption of considered applied."
neglect already amounting to
"abandonment" of a right after a party had dissenting opinion: (Aquino)
remained silent for quite a long time during • He who comes to court must come with
which petitioner had been openly using the clean hands
trademark in question. Such inaction on the • Pagasa acted in bad faith in registering the
part of respondent entitles petitioner to the YKK trademark as it knows of the existence
equitable principle of laches. of Yoshida Kogyo Kabushiki and the latter's
• respondent wanted goodwill and a wide engineers even helped Pagasa with respect
market established at the expense of the to business
petitioner but for its benefit. It is precisely
the intention of the law, including a provision UNNO COMMERCIAL ENTERPRISES, INC. vs.
on equitable principle to protect only the GENERAL MILLING CORPORATION
vigilant, not those guilty of laches. G.R. No. L-28554. February 28, 1983
• It is most unfair if at anytime, a previous Facts:
registrant, even after a lapse of more than • On December 11, 1962, respondent
five (5) years, can ask for the cancellation of General Milling Corporation filed an
a similar or the same trademark, the application for the registration of the
registration of which was never opposed by trademark "All Montana" to be used in the
the prior registrant. sale of wheat flour.
• Equity and justice, therefore, demand that • As the same trademark had been previously
petitioner should be allowed to continue the registered in favor of Unno, the Chief
use of the subject mark and the mark which Trademark Examiner declared an
was supposedly registered under the name interference proceeding between General
of respondent be deemed cancelled. Milling's application (Serial No. 9732), as
Provision in question: Junior/Party-Applicant, and Unno's
Section 4 (d) of RA 166 registration (Registration No. 9589), as
"Sec. 4. Registration of trade-marks, tradenames, and
service marks on the principal register. — There is hereby
Senior Party-Applicant to determine which
established a register of trademarks, tradenames and party has previously adopted and used the
service marks which shall be known as the principal register. trademark "All Montana.
The owner of a trademark, tradename or service mark used General Milling Corp's contention:
to distinguish his goods, business or services from the • alleged that it started using the trademark
goods. business or services of others shall have the right to
"All Montana" on August 31, 1955 and
register the same on the principal register unless it:

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

subsequently was licensed to use the same other mark of ownership, unless such
by Centennial Mills, Inc. by virtue of a deed importer is actually the owner thereof in the
of assignment executed on September 20, country from which the goods are imported.
1962. • A local importer, however, may make
Unno Commercial Enterprise's contention: application for the registration of a foreign
• argued that the same trademark had been trademark, trade name or service mark if he
registered in its favor on March 8, 1962 is duly authorized by the actual owner of the
asserting that it started using the trademark name or other mark of ownership.
on June 30, 1956, as indentor or broker for • The Deed of Assignment itself constitutes
S.H. Huang Bros. & Co., a local firm. sufficient proof of General Milling
• various shipments, documents, invoices and Corporation's ownership of the trademark
other correspondence of Centennial Mills, "All Montana," showing that Centennial Mills
Inc., shipping thousand of bags of wheat was a corporation duly organized and
flour bearing the trademark "All Montana" existing under and by virtue of the laws of
were shown by petitioner and maintained the State of Oregon, U.S.A. and the
that anyone, whether he is only an importer, absolute and registered owner of several
broker or indentor can appropriate, use and trademarks for wheat flour all of which were
own a particular mark of its own choice assigned by it to respondent General Milling
although he is not the manufacturer of the Corporation.
goods he deals with. • Unno Commercial Enterprises, Inc. merely
Director of Patents' decision acted as exclusive distributor of All Montana
• the Junior Party-Applicant is adjudged prior wheat flour in the Philippines. Only the
user of the trademark ALL MONTANA, but owner of a trademark, trade name or
because it is primarily geographically service mark may apply for its registration
descriptive, the application is remanded to and an importer, broker, indentor or
the Chief Trademark Examiner for proper distributor acquires no rights to the
proceeding before issuance of the certificate trademark of the goods he is dealing with in
of registration. the absence of a valid transfer or
Issue/Answer: assignment of the trade mark.
• WON Unno, as a mere indentor can apply • Inasmuch as it was not the owner of the
for the registration of the trademark of its trademark, the Senior Party could not be
principal / negative. Only owners of the regarded as having used and adopted it,
trademark can apply for its registration. and had no right to apply for its registration.
Ratio Decidendi: • a mere importer and distributor acquires no
• The right to register trademark is based on rights in the mark used on the imported
ownership. When the applicant is not the goods by the foreign exporter in the
owner of the trademark being applied for, he absence of an assignment of any kind
has no right to apply for the registration of • Trademarks used and adopted on goods
the same. manufactured or packed in a foreign country
• Under the Trademark Law only the owner of in behalf of a domestic importer, broker, or
the trademark, trade name or service mark indentor and distributor are presumed to be
used to distinguish his goods, business or owned by the manufacturer or packer,
service from the goods, business or service unless there is a written agreement clearly
of others is entitled to register the same. showing that ownership vests in the
• The term owner does not include the importer, broker, indentor or distributor.
importer of the goods bearing the • ownership of a trademark is not acquired by
trademark, trade name, service mark, or the mere fact of registration alone.

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

• Registration merely creates a prima facie that “CANON” can be used by private
presumption of the validity of the respondent for its sandals because the
registration, of the registrant's ownership of products of these two parties are dissimilar.
the trademark and of the exclusive right to Issue/ Answer:
the use thereof. Registration does not • WON the use of the tradename CANON by
perfect a trademark right. defendant would cause prejudice to
• The Court affirms respondent Director of petitioner / negative
Patent's decision declaring respondent Ratio Decidendi:
General Milling Corporation as the prior • the ownership of a trademark or tradename
user of the trademark "All Montana" on is a property right that the owner is entitled
wheat flour in the Philippines and ordering to protect as mandated by the Trademark
the cancellation of the certificate of Law. However, when a trademark is used by
registration for the same trademark a party for a product in which the other party
previously issued in favor of petitioner Unno does not deal, the use of the same
Commercial Enterprises, trademark on the latter's product cannot be
• Under Rule 178 of the Rules of the Patent validly objected to.
Office in Trademark Cases, 14 the Director • since the certificate of registration of
of Patents is expressly authorized to order petitioner for the trademark CANON covers
the cancellation of a registered mark or class 2 (paints, chemical products, toner,
trade name or name or other mark of dyestuff), private respondent can use the
ownership in an inter partes case, such as trademark CANON for its goods classified
the interference proceeding at bar. as class 25 (sandals). Clearly, there is a
provision in question: world of difference between the paints,
Section 2-A of the Trademarks Law (Republic Act 166), chemical products, toner, and dyestuff of
see page 11 herein
petitioner and the sandals of private
CANON KABUSHIKI KAISHA vs. CA respondent.
and NSR RUBBER CORPORATION • petitioner failed to attach evidence that
G.R. No. 120900. July 20, 2000 would convince the Court that petitioner has
Facts: also embarked in the production of footwear
• On January 15, 1985, private respondent products.
NSR Rubber Corporation filed an • In Faberge, Incorporated vs. Intermediate
application for registration of the mark Appellate Court, the Court held: since the
CANON for sandals in the BPTTT. senior user has not ventured in the
• A Verified Notice of Opposition was filed by production of briefs, an item which is not
petitioner alleging that it will be damaged by listed in its certificate of registration, the
the registration of the trademark CANON in senior user, cannot and should not be
the name of NSR Rubber Corp. allowed to feign that the junior user had
invaded the senior user's exclusive domain.
• The BPTTT declared NSR Rubber Corp in
The certificate of registration confers upon
default for failure to file Answer within the
the trademark owner the exclusive right to
prescribed period and allowed petitioner to
use its own symbol only to those goods
present its evidence ex-parte.
specified in the certificate, subject to the
• On November 10, 1992, the BPTTT issued conditions and limitations stated therein.
its decision dismissing the opposition of
• the exclusive right of petitioner in this case
petitioner and giving due course to private
to use the trademark CANON is limited to
respondent's application for the registration
the products covered by its certificate of
of the trademark CANON.
registration.
• CA affirmed the BPTTT decision and held

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

• the two classes of products in this case flow (1) The countries of the Union undertake, either
through different trade channels. The administratively if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the
products of petitioner are sold through registration and to prohibit the use of a trademark which
special chemical stores or distributors while constitutes a reproduction, imitation or translation, liable to
the products of private respondent are sold create confusion, of a mark considered by the competent
in grocery stores, sari-sari stores and authority of the country of registration or use to be well-
department stores. Thus, the evident known in that country as being already the mark of a person
disparity of the products of the parties in the entitled to the benefits of the present Convention and used
for identical or similar goods. These provisions shall also
case at bar renders unfounded the apply when the essential part of the mark constitutes a
apprehension of petitioner that confusion of reproduction of any such well-known mark or an imitation
business or origin might occur if private liable to create confusion therewith.
respondent is allowed to use the mark (2) A period of at least five years from the date of
CANON. registration shall be allowed for seeking the cancellation of
such a mark. The countries of the Union may provide for a
• The term "trademark" is defined by RA 166, period within which the prohibition of use must be sought.
the Trademark Law, as including "any word, (3) No time limit shall be fixed for seeking the
name, symbol, emblem, sign or device or cancellation or the prohibition of the use of marks or used in
any combination thereof adopted and used bad faith."
by a manufacturer or merchant to identify
his goods and distinguish them for those Memorandum dated 25 October 1983 to the Director of
Patents by Hon. Roberto V. Ongpin
manufactured, sold or dealt in by others." a) the mark must be internationally known;
• the Paris Convention, of which both the b) the subject of the right must be a trademark, not a
Philippines and Japan, the country of patent or copyright or anything else; IESDCH
petitioner, are signatories, 29 is a c) the mark must be for use in the same or similar
multilateral treaty that seeks to protect kinds of goods; and
d) the person claiming must be the owner of the mark
industrial property consisting of patents,
(The Parties Convention Commentary on the Paris
utility models, industrial designs, Convention. Article by Dr. Bogsch, Director General of the
trademarks, service marks, trade names World Intellectual Property Organization, Geneva,
and indications of source or appellations of Switzerland, 1985)'
origin, and at the same time aims to repress
unfair competition. EMERALD GARMENT MFTG. CORP vs. CA, BOP
• Regarding the applicability of Article 8 of the and H.D. LEE COMPANY, INC
Paris Convention, this Office believes that G.R. No. 100098. December 29, 1995
there is no automatic protection afforded an Facts:
entity whose tradename is alleged to have • On 18 September 1981 H.D. Lee Co., Inc.,
been infringed through the use of that name (Delaware, U.S.A.) filed with the BPTTT a
as a trademark by a local entity. Petition for Cancellation of Registration No.
• Based on the memorandum by Ongpin, SR 5054 (Supplemental Register) for the
Petitioner failed to comply with the third trademark "STYLISTIC MR. LEE" used on
requirement of the said memorandum that is skirts, jeans, blouses, socks, briefs, jackets,
the mark must be for use in the same or jogging suits, dresses, shorts, shirts and
similar kinds of goods. lingerie under Class 25, issued on 27
Provision in question: October 1980 in the name of Emerald
Article 8 of the Paris Convention, to wit: Garment (Philippines)
"A tradename shall be protected in all the countries of the • H.D. Lee Co. invokes Sec. 37 of R.A. No.
Union without the obligation of filing or registration, whether
166 (Trademark Law) and Art. VIII of the
or not it forms part of a trademark."
Paris Convention for the Protection of
Article 6bis of the Paris Convention states: Industrial Property, averred that petitioner's

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

trademark "so closely resembled its own private respondent may be considered
trademark, 'LEE' as previously registered "officially" put on notice that petitioner has
and used in the Philippines, and not appropriated or is using said mark, which,
abandoned, as to be likely, when applied to after all, is the function and purpose of
or used in connection with petitioner's registration in the supplemental register.
goods, to cause confusion, mistake and • the essential element of infringement is
deception on the part of the purchasing colorable imitation. This term has been
public as to the origin of the goods." defined as "such a close or ingenious
• the Director of Patents rendered a decision imitation as to be calculated to deceive
granting H.D. Lee's petition for cancellation ordinary purchasers, or such resemblance
and opposition to registration. of the infringing mark to the original as to
• using the test of dominancy, Director of deceive an ordinary purchaser giving such
Patents declared that petitioner's trademark attention as a purchaser usually gives, and
was confusingly similar to private to cause him to purchase the one
respondent's mark because "it is the word supposing it to be the other."
'Lee' which draws the attention of the buyer • Colorable imitation refers to such similarity
and leads him to conclude that the goods in form, content, words, sound, meaning,
originated from the same manufacturer. It is special arrangement, or general
undeniably the dominant feature of the appearance of the trademark or tradename
mark." with that of the other mark or tradename in
• CA affirmed the Director of Patents' decision their over-all presentation or in their
• Emerald contends that H.D. Lee is estopped essential, substantive and distinctive parts
from instituting an action for infringement as would likely mislead or confuse persons
before the BPTTT under the equitable in the ordinary course of purchasing the
principle of laches pursuant to Sec. 9-A of genuine article.
R.A. No. 166, otherwise known as the Law • 2 tests:
on Trade-marks, Trade-names and Unfair ◦ test of dominancy: if the competing
Competition trademark contains the main or
• Emerald alleges that it has been using its essential or dominant features of
trademark "STYLISTIC MR. LEE" since 1 another by reason of which confusion
May 1975, yet, it was only on 18 September and deception are likely to result, then
1981 that private respondent filed a petition infringement takes place; that
for cancellation of petitioner's certificate of duplication or imitation is not necessary,
registration for the said trademark. a similarity in the dominant features of
Issue/ Answer: the trademark would be sufficient.
• WON H. D. Lee's prior registration is ◦ The likelihood of confusion is further
enough to confer upon it the exclusive made more probable by the fact that
ownership of the trademark Lee in both parties are engaged in the same
opposition to Emerald's / negative line of business. It is well to reiterate
Ratio Decidendi: that the determinative factor in
• the reckoning point of ownership of Emerald ascertaining whether or not the marks
is 27 October 1980, 20 the date the are confusingly similar to each other is
certificate of registration SR No. 5054 was not whether the challenged mark would
published in the Official Gazette and issued actually cause confusion or deception of
to petitioner and not May 1, 1975. the purchasers but whether the use of
• It was only on the date of publication and such mark would likely cause confusion
issuance of the registration certificate that or mistake on the part of the buying

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AUF School of Law Atty. Eric Recalde

public. • The Trademark Law is very clear. It requires


◦ Holistic test: mandates that the entirety actual commercial use of the mark prior to
of the marks in question must be its registration. There is no dispute that
considered in determining confusing respondent corporation was the first
similarity. registrant, yet it failed to fully substantiate its
◦ The trademarks in their entirety as they claim that it used in trade or business in the
appear in their respective labels or hang Philippines the subject mark; it did not
tags must also be considered in relation present proof to invest it with exclusive,
to the goods to which they are attached. continuous adoption of the trademark which
The discerning eye of the observer must should consist among others, of
focus not only on the predominant considerable sales since its first use.
words but also on the other features • For lack of adequate proof of actual use of
appearing in both labels in order that he its trademark in the Philippines prior to
may draw his conclusion whether one is petitioner's use of its own mark and for
confusingly similar to the other. failure to establish confusing similarity
• the trademarks involved as a whole and rule between said trademarks, private
that petitioner's "STYLISTIC MR. LEE" is respondent's action for infringement must
not confusingly similar to private necessarily fail.
respondent's "LEE" trademark. Provisions in question:
• Petitioner's trademark is the whole Sec. 9-A of R.A. No. 166, otherwise known as the Law
on Trade-marks, Trade-names and Unfair Competition
"STYLISTIC MR. LEE." Although on its label
SEC. 9-A. Equitable principles to govern
the word "LEE" is prominent, the trademark proceedings. — In opposition proceedings and in all other
should be considered as a whole and not inter partes proceedings in the patent office under this act,
piecemeal. The dissimilarities between the equitable principles of laches, estoppel, and acquiescence,
two marks become conspicuous, noticeable where applicable, may be considered and applied.
and substantial enough to matter
SEC. 22. Infringement, what constitutes. — Any
◦ the products involved in the case at bar person who shall use, without the consent of the registrant,
are, in the main, various kinds of jeans. any reproduction, counterfeit, copy or colorable imitation of
◦ the average Filipino consumer generally any registered mark or trade-name in connection with the
buys his jeans by brand. sale, offering for sale, or advertising of any goods, business
or services on or in connection with which such use is likely
◦ the ordinary purchaser is not the
to cause confusion or mistake or to deceive purchasers or
"completely unwary consumer" but is others as to the source or origin of such goods or services,
the "ordinarily intelligent buyer" or identity of such business; or reproduce, counterfeit, copy
considering the type of product involved. or colorably imitate any such mark or trade-name and apply
• "LEE" is primarily a surname. Private such reproduction, counterfeit, copy, or colorable imitation to
respondent cannot, therefore, acquire labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection
exclusive ownership over and singular use with such goods, business or services, shall be liable to a
of said term. civil action by the registrant for any or all of the remedies
• private respondent failed to prove prior herein provided.
actual commercial use of its "LEE"
trademark in the Philippines before filing its Sec. 4 of R.A. No. 166, particularly paragraph 4(e):
CHAPTER II-A. — The Principal Register
application for registration with the BPTTT SEC. 4. Registration of trade-marks, trade-names and
and hence, has not acquired ownership service-marks on the principal register. — There is hereby
over said mark. established a register of trade-marks, trade-names and
• Actual use in commerce in the Philippines is service-marks which shall be known as the principal
an essential prerequisite for the acquisition register. The owner of a trade-mark, trade-name or service-
mark used to distinguish his goods, business or services
of ownership over a trademark
from the goods, business or services of others shall have

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

the right to register the same on the principal register, unless REGISTRABILITY
it:
xxx xxx xxx.
(e) Consists of a mark or trade-name which, when ANA L. ANG vs. TORIBIO TEODORO
applied to or used in connection with the goods, business or G.R. No. 48226. December 14, 194
services of the applicant is merely descriptive or deceptively Facts:
misdescriptive of them, or when applied to or used in
• Toribio Teodoro has continuously used "Ang
connection with the goods, business or services of the
applicant is primarily geographically descriptive or Tibay," both as a trade-mark and as a trade-
deceptively misdescriptive of them, or is primarily merely a name, in the manufacture and sale of
surname slippers, shoes, and indoor baseballs since
1910.
Sec. 2 and 2-A of the Philippine Trademark Law (R.A. • He formally registered it as a trade-mark on
No. 166) which explicitly provides that:
CHAPTER II. Registration of Marks and Trade-names.
September 29, 1915, and as a trade-name
SEC. 2. What are registrable. — Trade-marks, trade- on January 3, 1933.
names, and service marks owned by persons, corporations, • Ana Ang registered the same trade-mark
partnerships or associations domiciled in the Philippines and "Ang Tibay" for pants and shirts on April 11,
by persons, corporations, partnerships, or associations 1932, and established a factory for the
domiciled in any foreign country may be registered in
accordance with the provisions of this act: Provided, That
manufacture of said articles in the year
said trade-marks, trade-names, or service marks are 1937.
actually in use in commerce and services not less than two • Teodoro filed a complaint against Ang
months in the Philippines before the time the applications for • RTC rendered decision in faor of Ang on the
registration are filed: And Provided, further, That the country grounds that the two trade-marks are
of which the applicant for registration is a citizen grants by
law substantially similar privileges to citizens of the
dissimilar and are used on different and
Philippines, and such fact is officially certified, with a non-competing goods
certified true copy of the foreign law translated into the • CA reversed the RTC decision and ruled
English language, by the government of the foreign country that by uninterrupted and exclusive use
to the Government of the Republic of the Philippines. since 1910 in the manufacture of slippers
SEC. 2-A. Ownership of trade-marks, trade-names
and shoes, respondent's trade-mark has
and service-marks; how acquired. — Anyone who lawfully
produces or deals in merchandise of any kind or who acquired a secondary meaning; that the
engages in lawful business, or who renders any lawful goods or articles on which the two trade-
service in commerce, by actual use hereof in manufacture or marks are used are similar or belong to the
trade, in business and in the service rendered; may same class; and that the use by petitioner of
appropriate to his exclusive use a trade-mark, a trade-name, said trade-mark constitutes a violation of
or a service-mark not so appropriated by another, to
sections 3 and 7 of Act No. 666.
distinguish his merchandise, business or services from
others. The ownership or possession of trade-mark, trade- Issue/Answer:
name, service-mark, heretofore or hereafter appropriated, • WON the trademark and tradename “Ang
as in this section provided, shall be recognized and Tibay” is a descriptive word which will bar its
protected in the same manner and to the same extent as are registration. / negative
other property rights to the law. Ratio Decidendi:
Sec. 20 of the Trademark Law • The phrase "Ang Tibay" is an exclamation
SEC. 20. Certificate of registration prima facie denoting admiration of strength or durability.
evidence of validity. — A certificate of registration of a mark • The phrase "ang tibay" is never used
or tradename shall be a prima facie evidence of the validity adjectively to define or describe an object.
of the registration, the registrant's ownership of the mark or
trade-name, and of the registrant's exclusive right to use the
• "Ang Tibay" is not a descriptive term within
same in connection with the goods, business or services the meaning of the Trade-Mark Law but
specified in the certificate, subject to any conditions and rather a fanciful or coined phrase which may
limitations stated therein. properly and legally be appropriated as a
trade-mark or trade-name.

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

Issue on who is the lawful registrant: Teodoro approaching the mark of a business rival.
• Doctrine of secondary meaning:
◦ This doctrine is to the effect that a word ANG SI HENG and SALUSTIANA DEE vs.
or phrase originally incapable of WELLINGTON DEPT STORE INC
exclusive appropriation with reference to G.R. No. L-4531. January 10, 1953
an article on the market, because Facts:
geographically or otherwise descriptive, • Si Heng & Dee are engaged in the business
might nevertheless have been used so of manufacturing shirts, pants, drawers, and
long and so exclusively by one producer other articles of wear for men, women, and
with reference to his article that, in that children. They have been in that business
trade and to that branch of the since the year 1938, having obtained the
purchasing public, the word or phrase registration for the said articles the
has come to mean that the article was trademark of "Wellington."
his product. • Benjamin Chua applied for the registration
• the same trade-mark, used on unlike goods, of the business name "Wellington
could not cause confusion in trade and that, Department Store" on May 7, 1946. His
therefore, there could be no objection to the application therefor was approved by the
use and registration of a well-known mark Bureau of Commerce, and a certificate
by a third party for a different class of issued in his favor.
goods. • Petitioners allege that the use of the words
• Although two noncompeting articles may be "Wellington Department Store" as a
classified under two different classes by the business name and as a corporate name by
Patent Office because they are deemed not the defendant-appellee deceives the public
to possess the same descriptive properties, into buying defendant corporation's goods
they would, nevertheless, be held by the under the mistaken belief that the names
courts to belong to the same class if the are the plaintiff's or have the same source
simultaneous use on them of identical or as plaintiffs' goods, thereby resulting in
closely similar trade-marks would be likely damage to them.
to cause confusion as to the origin, or • Defendants raises the defense of
personal source, of the second user's dissimilarity of the goods that they deal in
goods. • court a quo dismissed the complaint and
• They would be considered as not falling held that Wellington Co. has not been used
under the same class only if they are so by any enterprise.
dissimilar or so foreign to each other as to Issue/Answer:
make it unlikely that the purchaser would • WON Wellington, bing a geographical can
think the first user made the second user's be registered - negative
goods. • WON defendant is guilty of unfair
• It is certainly not farfetched to surmise that competition - negative
the selection by petitioner of the same Ratio Decidendi:
trade-mark for pants and shirts was • mere geographical names are ordinarily
motivated by a desire to get a free ride on regarded as common property, and it is a
the reputation and selling power it has general rule that the same cannot be
acquired at the hands of the respondent. As appropriated as the subject of an exclusive
observed in another case, 3 the field from trademark or tradename.
which a person may select a trade-mark is • As the term cannot be appropriated as a
practically unlimited, and hence there is no trademark or a tradename, no action for
excuse for impinging upon or even closely violation thereof can be maintained, as

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

none is granted by the statute in such 'Adagio" for the Brassieres manufactured by
cases. it. In its application, respondent company
• no action may lie in favor of the plaintiffs- alleged that said trademark was first used
appellants herein for damages or injunctive by it in the United States on October 26,
relief for the use by the defendants- 1937, and in the Philippines on August 31,
appellees of the name "Wellington." 1946
issue of unfair competition: • Director, on August 13, 1957, approved for
• While there is similarity between the publication in the Official Gazette said
trademark or tradename "Wellington trademark of respondent company, in
Company" and that of "Wellington accordance with Section 7 of Republic Act
Department Store," no confusion or No. 166 (Trademark Law), having found,
deception can possibly result or arise from inter alia, that said trademark is "a fanciful
such similarity because the latter is a and arbitrary use of a foreign word adopted
"department store," while the former does by applicant as a trademark for its product;
not purport to be so. that it is neither a surname nor a
• Neither can the public be said to be geographical term, nor any that comes
deceived into the belief that the goods being within the purview of Section 4 of Republic
sold in defendant's store originate from the Act No. 166;
plaintiffs, because the evidence shows that • petitioner filed with respondent Director a
defendant's store sells no shirts or wear petition for cancellation of said trademark,
bearing the trademark "Wellington," but on the grounds that it is a common
other trademarks descriptive name of an article or substance
• doctrine in Ang vs Teodoro cannot be on which the patent has expired
applied because the evidence submitted by • Appellant claims that the trademark
the appellants did not prove that their "Adagio" has become a common descriptive
business has continued for so long a time name of a particular style of brassiere and
that it has become of consequence and is, therefore, unregistrable. It is urged that
acquired a goodwill of considerable value, said trademark had been used by local
such that its articles and products have brassiere manufacturers since 1948, without
acquired a well-known reputation, and objection on the part of respondent
confusion will result by the use of the company.
disputed name by the defendants' • Director of Patents (of January 17, 1961)
department store. dismissed Romero's petition for cancellation
• plaintiffs- appellants have not been able to of the registration of the trademark "Adagio"
show the existence of a cause of action for for brassieres manufactured by respondent
unfair competition against the defendants- Maiden Form Brassiere Co., Inc.
appellees. Issue/Answer:
• WON Adagio is a descriptive word
ANDRES ROMERO vs. MAIDEN FORM incapable of registration / negative
BRASSIERE CO., INC Ratio Decidendi:
G.R. No. L-18289. March 31, 1964 • The evidence shows that the trademark
Facts: "Adagio" is a musical term, which means
• On February 12, 1957, respondent slowly or in an easy manner, and was used
company, a foreign corporation, filed with as a trademark by the owners thereof (the
respondent Director of Patents an Rosenthals of Maiden Form Co., New York)
application for registration (pursuant to because they are musically inclined.
Republic Act No. 166) of the trademark • Being a musical term, it is used in an

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

arbitrary (fanciful) sense as a trademark for for perfume, lipstick, and nail polish as
brassieres manufactured by respondent opposed to Chua Che's use which was
company. admittedly only in 1957.
• It also appears that respondent company • Director of Patents held: The products of the
has, likewise, adopted other musical terms parties, while specifically different, are
such as "Etude", "Chansonette", "Prelude", products intended for use in the home and
"Over-ture", and "Concerto", to identify, as a usually have common purchasers.
trademark, the different styles or types of its Furthermore, the use of X-7 for laundry
brassieres. soap is but a natural expansion of business
• On the other hand, respondent company's of the opposer.
long and continuous use of the trademark Issue/ Answer:
"Adagio" has not rendered it merely • WON allowing Chua Che to register the
descriptive of the product. same mark for laundry soap would likely to
On abandonment of trademark by private cause confusion on the purchasers of X-7
defendant: products by SY Tou / affirmative.
• "To work an abandonment, the disuse must Ratio Decidendi:
be permanent and not ephemeral; it must • while it is no longer necessary to establish
be intentional and voluntary, and not that the goods of the parties possess the
involuntary or even compulsory. There must same descriptive properties, as previously
be a thoroughgoing discontinuance of any required under the Trade Mark Act of 1905,
trade-mark use of the mark in question" registration of a trademark should be
• "Non-use because of legal restrictions is not refused in cases where there is a likelihood
evidence of an intent to abandon. of confusion, mistake, or deception, even
• respondent Director of Patents did not err in though the goods fall into different
dismissing the present petition for categories
cancellation of the registered trademark of • The products of appellee are common
appellee company, and the decision household items now-a-days, in the same
appealed from is therefore hereby affirmed, manner as laundry soap.
with costs against the appellant. • The likelihood of purchasers to associate
Provisions in question: these products to a common origin is not
Section 2 of Republic Act No. 166 as amended by far-fetched. Both from the standpoint of
Section 1 of Republic Act 865 priority of use and for the protection of the
see page 11 herein
buying public and, of course, appellee's
CHUA CHE vs. PHILIPPINE PATENT OFFICE rights to the trademark "X-7", it becomes
and SY TUO manifest that the registration of said
G.R. No. L-18337. January 30, 1965 trademark in favor of applicant-appellant
Facts: should be denied.
• Under date of October 30, 1958, Chua Che
STERLING PRODUCTS INT'L INC. vs.
presented with the Philippines Patent Office
FARBENFABRIKEN BAYER
a petition praying for the registration in his
AKTIENGESELLSCHAFT and ALLIED
favor the trade name of "X-7"
MANUFACTURING AND TRADING CO., INC.
• Director of Patents denied the application G.R. No. L-19906. April 30, 1969
for use on soap Class 51, being Facts:
manufactured by said Chua Che, upon the
• each of the principal suitors, namely,
opposition of respondent Sy Tuo.
Sterling Products International, Inc., (SPI on
• Sy Tuo claims that he owns the tademark medicine) and defendant Farbenfabriken
and had been using it since 1951 as mark

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

Bayer Aktiengesellschaft, (FBA on with respect to sales following the effective


insecticides) seeks to exclude the other date of this decree.Provided, however, that
from use in the Philippines of the nothing herein contained in this Sec. III
trademarks BAYER and BAYER CROSS IN shall:
CIRCLE. ◦ Affect in any way the rights or title of the
• The trial court declared itself "in favor of the defendants Bayer, its successors, subsidiaries
or assigns, in or to the name 'Bayer' and the
solution that favors division of the market
'Bayer Cross' mark or registrations thereof, or.
rather than monopoly." But to avoid ◦ Affect or diminish any right, title or interest of
confusion, it directed defendants "to add a said defendants, their successors, subsidiaries
distinctive word or words in their mark to or assigns, in or to or under any heretofore
indicate that their products come from acquired and presently existing patents, patent
Germany." applications, patent licenses, trademarks,
trade-names (such as the name 'Bayer' and
• The word BAYER was the surname of the 'Bayer Cross' mark and registrations
Friedrich Bayer, a German, who, on August thereof), processes or formulae relating to the
1, 1863, organized a drug company bearing manufacturing, processing, use or sale of
his name — Friedr. Bayer et comp. — at aspirin, aspirin compounds, pharmaceutical or
Barmen, Germany. The company was at other drug or chemical products, or impair any
first engaged in the manufacture and sale of rights or remedies of said defendants, their
successors, subsidiaries or assigns, provided
chemicals. At about the year 1888 it started by statute or convention, and by suits for
to manufacture pharmaceutical preparations damages, injunction or other remedy with
also. respect to any such patents, patent
• FFB is the original owner of the name and applications, patent licenses or trademarks"
mark. FFB was based in Germany and had • The trademarks BAYER and BAYER
a subsidiary company in New York. When CROSS IN CIRCLE were then registered in
the war broke out, the subsidiary in New the Philippines under the old Trademark
York was declared as an enemy controlled Law (Act 666) by The Bayer Co., Inc.: the
corp so its assets were sold to Sterling BAYER CROSS IN CIRCLE trademark on
Corp. April 18, 1939 for which it was issued
• disputes with regard the ownership of the Certificate of Registration No. 13081
name and mark were resolved by 2 • These trademark rights were assigned to
agreements between Winthrop's and FFB SPI on December 30, 1942 and the
• U.S. District Court for Southern New York assignment was recorded in the Philippines
held that: The Bayer contract of 1923, the Patent Office on March 5, 1947.
Bayer contract of 1926, and any and all • SPI was issued by the Philippines Patent
amendments or supplements thereto are Office on June 18, 1948 two new certificates
declared and adjudged to be unlawful under of registration: No. 1260-S for BAYER
the Anti-Trust Laws of the United States, CROSS IN CIRCLE; No. 1262-S for
and the defendants Bayer and Sterling, and BAYER. The registration of these
their respective successors and trademarks was only for "Medicines."
subsidiaries, or any of them, be and they • AMATCO) started selling FBA's products
are hereby enjoined and restrained from especially "Folidol," a chemical insecticide
carrying out or enforcing any of the which bears the BAYER CROSS IN
aforesaid contracts, or any supplements, CIRCLE trademark.
amendments or modifications thereof, or • On November 18, 1959, FBA applied for the
from paying to I.G. Farben, its subsidiaries, registration of the BAYER CROSS IN
successors or assigns, any royalties or CIRCLE trademark with the Philippines
share of profits pursuant to said contracts Patent Office for animal and plant

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

destroying agents. be deceived either into that belief or into


• On February 25, 1960, FBA was issued a the belief that there is some connection
certificate of registration in the between the plaintiff and defendant
Supplemental Register, SR-304. which, in fact, does not exist.
Issue/Answer: • Although two noncompeting articles may be
Ratio Decidendi: classified under two different classes by the
• actual use in commerce or business is a Patent Office because they are deemed not
prerequisite to the acquisition of the right of to possess the same descriptive properties,
ownership over a trademark. This rule is they would, nevertheless, be held by the
spelled out in our Trademark Law courts to belong to the same class if the
• adoption alone of a trademark would not simultaneous use on them of identical or
give exclusive right thereto. Such right closely similar trademarks would be likely to
"grows out of their actual use cause confusion as to the origin, or personal
• The BAYER trademarks registered in the source, of the second user's goods. (relate
Philippines to which plaintiff SPI may lay “Ang Tibay” case)
claim are those which cover medicines only. • It was not plaintiff's predecessor but
For, it was on said goods that the BAYER defendant's namely Farbenfabriken or
trademarks were actually used by it in the Bayer Germany that first introduced the
Philippines. Therefore, the certificates of medical products into the Philippine market
registration for medicines issued by the and household with the Bayer mark half a
Director of Patents upon which the century ago
protection is enjoyed are only for medicines. • Plaintiff cannot now say that the present
Nothing in those certificates recited would worth of its BAYER trademarks it owes
include chemicals or insecticides. solely to its own efforts; it is not insulated
• if the certificate of registration were to be from the charge that as it marketed its
deemed as including goods not specified medicines it did so with an eye to the
therein, then a situation may arise whereby goodwill as to quality that defendants'
an applicant may be tempted to register a predecessor had established.
trademark on any and all goods which his • Plaintiff is not the first user thereof in the
mind may conceive even if he had never Philippines. The trademarks do not
intended to use the trademark for the said necessarily link plaintiff with the public.
goods. • But defendants ask us to delist plaintiff's
• Neither will the 1927 registration in the BAYER trademarks for medicine from the
United States of the BAYER trademark for Principal Register, claiming right thereto for
insecticides serve plaintiff any. Registration said use. Said trademarks had been
in the United States is not registration in the registered since 1939 by plaintiff's
Philippines. predecessor, The Bayer Co., Inc.
• two types of confusion Defendants' claim is stale; it suffers from the
◦ confusion of goods "in which event the defect of non-use.
ordinarily prudent purchaser would be • plaintiff may hold on to its BAYER
induced to purchase one product in the trademarks for medicines. And defendants
belief that he was purchasing the other. may continue using the same trademarks
◦ confusion of business: "Here though the for insecticides and other chemicals, not
goods of the parties are different, the medicines.
defendant's product is such as might provision:
reasonably be assumed to originate with Sec. 2-A, RA 166
see page ii herein
the plaintiff, and the public would then

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

CRISANTA Y. GABRIEL vs. DR. JOSE R. PEREZ own name/ negative


G.R. No. L-24075. January 31, 1974 Ratio Decidendi:
Facts: • "Because the corporation was allegedly
• Dr. Jose R. Perez filed with the Patents going bankrupt and the members were
Office on February 23, 1961 an application deserting, the Respondent terminated the
for registration of the trademark "WONDER" agreement in July, 1959, and thereafter he
in the Supplemental Register. asked the Petitioner to become the
• On October 19, 1962, petitioner Crisanta Y. distributor of his products
Gabriel claiming that he had been using the • Crisanta Y. Gabriel appears to be a mere
subject mark since 1959 filed with the distributor of the product by contract with
Patent Office a petition for cancellation of the manufacturer, respondent Dr. Jose R.
the trademark "WONDER from the Perez and the same was only for a term.
supplemental register alleging that the • Under Sections 2 and 2-A of the Trademark
registrant was not entitled to register the Law, Republic Act No. 166, as amended,
said trademark at the time of his application the right to register trademark is based on
for registration ownership and a mere distributor of a
• In support of her petition, she further product bearing a trademark, even if
alleged the written contract between her permitted to use said trademark, has no
and the registrant (respondent) wherein, right to and cannot register the said
according to her, the latter has recognized trademark
her right of use and ownership of said • Petitioner urges that the agreement of
trademark; and that the labels submitted by exclusive distributorship executed by and
the registrant are the very containers between her and respondent vested in her
bearing the trademark "WONDER" which the exclusive ownership of the trademark
are owned by her and which she has been "WONDER". But a scrutiny of the provisions
exclusively and continuously using in of said contract does not yield any right in
commerce favor of petitioner other than that expressly
• after Dr. Perz had perfected his research granted to her — to be the sole and
and obtained a certificate of label, he made exclusive distributor of respondent Dr.
an agreement (January, 1959) with a certain Perez' product.
company named 'Manserco' for the • the agreement never mentioned transfer of
distribution of his soap. It was then being ownership of the trademark. It merely
managed by Mariano S. Yangga who empowers the petitioner as exclusive
happens to be the brother of the Petitioner distributor to own the package and to create
Crisanta Y. Gabriel a design at her pleasure, but not the right to
• "Because the corporation was allegedly appropriate unto herself the sole ownership
going bankrupt and the members were of the trademark so as to entitle her to
deserting, the Respondent terminated the registration in the Patent Office.
agreement in July, 1959, and thereafter he • The exclusive distributor does not acquire
asked the Petitioner to become the any proprietary interest in the principal's
distributor of his products trademark.
• Director of Patents rendered his decision • the trademark "WONDER" has long been
denying the petition of Gabriel to cancel the identified and associated with the product
certificate of registration manufactured and produced by the Dr. Jose
Issue/Answer: R. Perez Cosmetic Laboratory.
• WON Gabriel, as a mere distributor have • Petitioner's act in defraying substantial
the right to register the subject mark in her expenses in the promotion of the

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

Respondent's goods and the printing of the or origin. / negative


packages are the necessary or essential Ratio Decidendi:
consequences of Paragraph 6 of the • the right to a trademark is a limited one, in
agreement because, anyway, those the sense that others may use the same
activities are normal in the field of sale and mark on unrelated goods.
distribution, as it would redound to her own • the mere fact that one person has adopted
benefit as distributor, and those acts are and used a trademark on his goods does
incumbent upon her to do. not prevent the adoption and use of the
same trademark by others on articles of a
PHILIPPINE REFINING CO., INC.vs. NG SAM different description.
G.R. No. L-26676. July 30, 1982 • where no confusion is likely to arise, as in
Facts: this case, registration of a similar or even
• Private respondent filed with the Philippine identical mark may be allowed.
Patent Office an application for registration • The term "CAMIA" is descriptive of a whole
of the trademark "CAMIA" for his product, genus of garden plants with fragrant white
ham, which falls under Class 47 (Foods and flowers.
Ingredients of Food). Petitioner opposed the • A trademark is designed to identify the user.
application claiming that it first used said But it should be so distinctive and
trademark on his products: lard, butter, sufficiently original as to enable those who
cooking oil, abrasive detergents, polishing come into contact with it to recognize
materials and soap of all kinds, some of instantly the identity of the user. "It must be
which are likewise classified under Class affirmative and definite, significant and
47. distinctive, capable to indicate origin.
• The trademark "CAMIA" was first used in • if a mark is so commonplace that it cannot
the Philippines by petitioner on its products be readily distinguished from others, then it
in 1922 and registered the same in 1949 is apparent that it cannot identify a particular
• On November 25, 1960, respondent Ng business; and he who first adopted it cannot
Sam, a Chinese citizen residing in Iloilo City, be injured by any subsequent appropriation
filed an application with the Philippine or imitation by others, and the public will not
Patent Office for registration of the identical be deceived."
trademark "CAMIA" for his product, ham, • While ham and some of the products of
which likewise falls under Class 47. Alleged petitioner are classified under Class 47
date of first use of the trademark by (Foods and Ingredients of Food), this alone
respondent was on February 10, 1959. cannot serve as the decisive factor in the
• Director of Patents rendered a decision resolution of whether or not they are related
allowing registration of the trademark goods.
"CAMIA" in favor of Ng Sam.finding that `the • Emphasis should be on the similarity of the
goods of the parties are not of a character products involved and not on the arbitrary
which purchasers would be likely to attribute classification or general description of their
to a common origin. properties or characteristics.
Issue/Answer: • Opposer's products are ordinary day-to-day
• WON the product of respondent Ng Sam, household items whereas ham is not
which is ham, and those of petitioner necessarily so. Thus, the goods of the
consisting of lard, butter, cooking oil and parties are not of a character which
soap are so related that the use of the same purchasers would be likely to attribute to a
trademark "CAMIA'' on said goods would common origin."
likely result in confusion as to their source • the business of the parties are non-

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

competitive and their products so unrelated offering for sale, or advertising of any
that the use of identical trademarks is not goods, business or services on or in
likely to give rise to confusion, much less connection with which such use is likely to
cause damage to petitioner. cause confusion or mistake or to deceive
provision: purchasers or others as to the source or
Section 4(d) of Trademark law origin of such goods or services, or identity
"a mark which consists of or comprises a mark or of such business; or reproduce, counterfeit,
tradename which so resembles a mark or tradename
copy or colorably imitate any such mark or
registered in the Philippines or a mark or tradename
previously used in the Philippines by another and not tradename and apply such reproduction,
abandoned, as to be likely, when applied to or used in counterfeit, copy or colorable imitation to
connection with the goods, business services of the labels, signs, prints, packages, wrappers,
applicant, to cause confusion or mistake or to deceive receptacles or advertisements intended to
purchasers." be used upon or in connection with such
goods, business or services."
ESSO STANDARD EASTERN, INC vs.CA
• Implicit in this definition is the concept that
and UNITED CIGARETTE CORPORATION
the goods must be so related that there is a
G.R. No. L-29971. August 31, 1982
likelihood either of confusion of goods or
Facts:
business.
• Esso filed a case against United Cigarette 1
• It is undisputed that the goods on which
Corp for trademark infringement alleging
petitioner uses the trademark ESSO,
that after the latter had acquired in
petroleum products, and the product of
November, 1963 the business, factory and
respondent, cigarettes, are non-competing.
patent rights of La Oriental Tobacco
Corporation, it began to use the trademark • non-competing goods may be those which,
ESSO on its cigarettes, the same trademark though they are not in actual competition,
used by petitioner in its quality petroleum are so related to each other that it might
products which was likely to cause reasonably be assumed that they originate
confusion or deception on the part of the from one manufacturer.
purchasing public as to its origin or source, • Goods are related when they belong to the
to the detriment of its own products. same class or have the same descriptive
• In its answer, private respondent admitted properties; when they possess the same
the use of the trademark ESSO on its own physical attributes or essential
product of cigarettes but claimed that these characteristics with reference to their form,
were not identical to those produced and composition, texture or quality.
sold by the petitioner • the goods are obviously different from each
• The trial court found United Cigarette Corp other — with "absolutely no iota of
guilty of infringement of trademark. similitude"
• On appeal, the judgment was reversed and • They are so foreign to each other as to
the complaint was dismissed. make it unlikely that purchasers would think
Issue/Answer: that petitioner is the manufacturer of
respondent's goods. The mere fact that one
• WON United Cigarette Corp can be held person has adopted and used a trademark
liable for trademark infringement / negative on his goods does not prevent the adoption
Ratio Decidendi: and use of the same trademark by others on
• The law defines infringement as the use unrelated articles of a different kind.
without consent of the trademark owner of • 2
The products of each party move along
any "reproduction, counterfeit, copy or and are disposed through different channels
colorable imitation of any registered mark or of distribution.
tradename in connection with the sale,

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

• 3
A comparison of the labels of the samples for registration of the trademark in question.
of the goods submitted by the parties shows • Knowing, therefore, that the word
a great many differences on the trademarks "CONVERSE" belongs to and is being used
used. by petitioner, and is in fact the dominant
• CA decision affirmed. word in petitioner's corporate name,
respondent has no right to appropriate the
CONVERSE RUBBER CORP. vs. same for use on its products which are
UNIVERSAL RUBBER PRODUCTS, INC. and similar to those being produced by
TIBURCIO S. EVALLE petitioner.
G.R. No. L-27906. January 8, 1987 • Appropriation by another of the dominant
Facts: part of a corporate name is an infringement
• Respondent Universal Rubber Products, • The unexplained use by respondent of the
Inc. filed an application with the Philippine dominant word of petitioner's corporate
Patent office for registration of the name lends itself open to the suspicion of
trademark "UNIVERSAL CONVERSE AND fraudulent motive to trade upon petitioner's
DEVICE" used on rubber shoes and rubber reputation.
slippers. • The sales of 12 to 20 pairs a month of
• Petitioner Converse Rubber Corporation petitioner's rubber shoes cannot be
filed its opposition to the application for considered insignificant, considering that
registration they appear to be of high expensive quality,
• Director of Patents dismissed the opposition which not too many basketball players can
of the petitioner and gave due course to afford to buy.
respondent's application. • Another factor why respondent's application
Issue/Answer: should be denied is the confusing similarity
• WON the respondent's partial appropriation between its trademark "UNIVERSAL
of petitioner's corporate name is of such CONVERSE AND DEVICE" and petitioner's
character that it is calculated to deceive or corporate name and/or its trademarks
confuse the public to the injury of the "CHUCK TAYLOR" and "ALL STAR
petitioner to which the name belongs./ DEVICE" which could confuse the
affirmative purchasing public to the prejudice of
Ratio Decidendi: petitioner.
• The ownership of a trademark or tradename • The determinative factor in ascertaining
is a property right which the owner is whether or not marks are confusingly similar
entitled to protect "since there is damage to to each other "is not whether the challenged
him from confusion or reputation or goodwill mark would actually cause confusion or
in the mind of the public as well as from deception of the purchasers but whether the
confusion of goods. use of such mark would likely cause
• CONVERSE" is the dominant word which confusion or mistake on the part of the
identifies petitioner from other corporations buying public
engaged in similar business. • When the law speaks of "purchaser," the
• Respondent, in the stipulation of facts, reference is to ordinary average purchasers
admitted petitioner's existence since 1946 • a foreign corporation which has never done
as a duly organized foreign corporation any business in the Philippines and which is
engaged in the manufacture of rubber unlicensed and unregistered to do business
shoes. This admission necessarily betrays here, but is widely and favorably known in
its knowledge of the reputation and the Philippines through the use therein of its
business of petitioner even before it applied products bearing its corporate and

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

tradename, has a legal right to maintain an Corporation, organized and existing in and
action in the Philippines to restrain the under the laws of the state of Pennsylvania,
residents and inhabitants thereof from U.S.A., filed a petition with the Philippine
organizing a corporation therein bearing the Patent Office for the cancellation of the
same name as the foreign corporation, trademark "Puritan" registered in the name
when it appears that they have personal of General Garments Corporation,
knowledge of the existence of such a Ratio Decidendi:
foreign corporation, and it is apparent that • It should be postulated at this point that
the purpose of the proposed domestic respondent is not suing in our courts "for the
corporation is to deal and trade in the same recovery of any debt, claim or demand," for
goods as those of the foreign corporation. which a license to transact business in the
Provision: Philippines is required by Section 69 of the
Article 8 of Paris Convention provides that "a trade name Corporation Law,
[corporate name] shall be protected in all the countries of
• "A foreign corporation which has never done
the Union without the obligation of filing or registration,
whether or not it forms part of the trademark. . . . business in the Philippine Islands and
which is unlicensed and unregistered to do
Sec. 37 of RA No. 166, otherwise known as the business here, but is widely and favorably
Trademark Law: known in the Islands through the use
"Sec. 37. Rights of Foreign Registrants-Persons therein of its products bearing its corporate
who are nationals of, domiciled in, or have a bona fide or
effective business or commercial establishment in any
and trade name has a legal right to maintain
foreign country, which is a party to an international an action in the Islands.
convention or treaty relating to marks or tradenames on the • "The purpose of such a suit is to protect its
repression of unfair competition to which the Philippines reputation, corporate name and goodwill
may be a party, shall be entitled to the benefits and subject which has been established through the
to the provisions of this Act . . . natural development of its trade for a long
"Tradenames of persons described in the first paragraph of
this section shall be protected without the obligation of filing period of years, in the doing of which it does
or registration whether or not they form parts of marks." not seek to enforce any legal or contract
rights arising from, or growing out of any
CAPACITY TO SUE OF FOREIGN ENTITIES business which it has transacted in the
Philippine Islands.
central issue: WON the foreign company not doing • "The right to the use of the corporate or
business nor registered in the Philippines has the trade name is a property right, a right in
standing to sue a Philippine domiciled business rem, which it may assert and protect in any
entity for infringement before Philippine courts. of the courts of the world — even in
Answer: affirmative jurisdictions where it does not transact
business — just the same as it may protect
GENERAL GARMENTS CORP vs. DIRECTOR OF its tangible property, real or personal
PATENTS and PURITAN SPORTSWEAR against trespass or conversion."
G.R. No. L-24295. September 30, 1971 • Republic Act No. 638, inserting Section 21-A
Facts: in the Trademark Law, allows a foreign
• GGC is the owner of the trademark corporation or juristic person to bring an
"Puritan," under Registration No. 10059 action in Philippine courts for infringement
issued on November 15, 1962 by the of a mark or trade-name, for unfair
Philippine Patent Office, for assorted men's competition, or false designation of origin
wear, such as sweaters, shirts jackets, and false description, "whether or not it has
undershirts and briefs. been licensed to do business in the
Philippines under Act Numbered Fourteen
• On March 9, 1964 the Puritan Sportswear

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

hundred and fifty-nine, as amended, LA CHEMISE LACOSTE, S. A. vs. FERNANDEZ


otherwise known as the Corporation Law, at and GOBINDRAM HEMANDAS
the time it brings complaint." G.R. Nos. 63796-97. May 21, 1984
• In any event, respondent in the present Facts:
case is not suing for infringement or unfair • In 1975, Hemandas & Co., a duly licensed
competition under Section 21-A, but for domestic firm applied for and was issued
cancellation under Section 17, on one of the Reg. No. SR-2225 (SR stands for
grounds enumerated in Section 4. Supplemental Register) for the trademark
◦ The first kind of action, it may be stated, "CHEMISE LACOSTE & CROCODILE
is cognizable by the Courts of First DEVICE" by the Philippine Patent Office for
Instance (Sec. 27); the second partakes use on T-shirts, sportswear and other
of an administrative proceeding before garment products of the company. Two
the Patent Office (Sec. 18, in relation to years later, it applied for the registration of
Sec. 8). the same trademark under the Principal
◦ while a suit under Section 21-A requires Register.
that the mark or tradename alleged to • Hemandas & Co. assigned to respondent
have been infringed has been Gobindram Hemandas all rights, title, and
"registered or assigned" to the suing interest in the trademark "CHEMISE
foreign corporation, a suit for LACOSTE & DEVICE".
cancellation of the registration of a mark • On November 21, 1980, the petitioner filed
or tradename under Section 17 has no its application for registration of the
such requirement. trademark "Crocodile Device" (Application
Provisions: Serial No. 43242) and "Lacoste"
"Section 17(c) and Section 4(d) of the Trade Law provide (Application Serial No. 43241). The former
respectively as follows: was approved for publication while the latter
"SEC. 17. Grounds for cancellation. — Any person,
was opposed by Games and Garments
who believes that he is or will be damaged by the
registration of a mark or trade-name, may, upon the • On March 21, 1983, the petitioner filed with
payment of the prescribed fee, apply to cancel said the National Bureau of Investigation (NBI) a
registration upon any of the following grounds: letter-complaint alleging therein the acts of
xxx xxx xxx unfair competition being committed by
(c) That the registration was obtained fraudulently or Hemandas and requesting their assistance
contrary to the provisions of section four, Chapter II
thereof; . . ." in his apprehension and prosecution.
"SEC. 4. Registration of trade-marks, trade-names and • Search warrants based on violation of Art.
service-marks which shall be known as the principal 189 of RPC were issued against Hemandas
register. The owner of a trade-mark, trade-name or service- • Hemandas filed a motion to quash the
mark used to distinguish his goods, business or services
from the goods, business or services of others shall have search warrants and the same was granted
the right to register the same on the principal register, unless by the respondent court
it: Ratio Decidendi:
xxx xxx xxx • As early as 1927, this Court was, and it still
(d) Consists of or comprises a mark or trade-name is, of the view that a foreign corporation not
which so resembles a mark or trade-name registered in the
Philippines or a mark or trade-name previously used in the
doing business in the Philippines needs no
Philippines by another and not abandoned, as to be likely, license to sue before Philippine courts for
when applied to or used in connection with goods, business infringement of trademark and unfair
or services of the applicant, to cause confusion or mistake competition.
or to deceive purchasers; or . . ." • Since it is the trade and not the mark that is
to be protected, a trade-mark acknowledges
no territorial boundaries of municipalities or

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

states or nations, but extends to every in international commerce and not


market where the trader's goods have belonging to him is to render nugatory the
become known and identified by the use of very essence of the law on trademarks and
the mark. tradenames.
• The case filed by petitioner is a criminal Issue of probable cause:
case. Since the violation is against the • Probable cause has traditionally meant such
State, petitioner's capacity to sue would facts and circumstances antecedent to the
become, therefore, of not much issuance of the warrant that are in
significance. We cannot allow a possible themselves sufficient to induce a cautious
violator of our criminal statutes to escape man to rely upon them and act in pursuance
prosecution upon a far-fetched contention thereof
that the aggrieved party or victim of a crime • probable cause "presupposes the
has no standing to sue. introduction of competent proof that the
• upholding the right of the petitioner to party against whom it is sought has
maintain the present suit before our courts performed particular acts, or committed
for unfair competition or infringement of specific omissions, violating a given
trademarks of a foreign corporation, is provision of our criminal laws
recognizing our duties and the rights of • True, the lower court should be given the
foreign states under the Paris Convention opportunity to correct its errors, if there be
for the Protection of Industrial Property to any, but the rectification must be based on
which the Philippines and France are sound and valid grounds. In this case, there
parties. was no compelling justification for the about
• a treaty or convention is not a mere moral face.
obligation to be enforced or not at the Supplemental Registration
whims of an incumbent head of a Ministry. It • A certificate of registration in the
creates a legally binding obligation on the Supplemental Register is not prima facie
parties founded on the generally accepted evidence of the validity of registration, of the
principle of international law of pacta sunt registrant's exclusive right to use the same
servanda which has been adopted as part in connection with the goods, business, or
of the law of our land. services specified in the certificate. Such a
• petitioner is the owner of the trademarks certificate of registration cannot be filed,
"LACOSTE", "CHEMISE LACOSTE", the with effect, with the Bureau of Customs in
crocodile or alligator device, and the order to exclude from the Philippines,
composite mark of LACOSTE and the foreign goods bearing infringement marks or
representation of the crocodile or alligator. trade names (Rule 124, Revised Rules of
Any pretensions of the private respondent Practice Before the Phil. Pat. Off. in
that he is the owner are absolutely without Trademark Cases)
basis
• Section 19-A of Republic Act 166 as
• The records show that the goodwill and amended not only provides for the keeping
reputation of the petitioner's products of the supplemental register in addition to
bearing the trademark LACOSTE date back the principal register but specifically directs
even before 1964 when LACOSTE clothing that:
apparels were first marketed in the
◦ "The certificates of registration for
Philippines. To allow Hemandas to continue
marks and trade names registered on
using the trademark Lacoste for the simple
the supplemental register shall be
reason that he was the first registrant in the
conspicuously different from certificates
Supplemental Register of a trademark used
issued for marks and trade names

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

registered on the principal register." 1. Any person who, in unfair competition and
• The registration of a mark upon the for the purposes of deceiving or defrauding another of his
legitimate trade or the public in general, shall sell his goods
supplemental register is not, as in the case giving them the general appearance of goods of another
of the principal register, prima facie manufacturer or dealer, either as to the goods themselves,
evidence of... or in the wrapping of the packages in which they are
◦ the validity of registration; contained or the device or words thereon or in any other
◦ the registrant's ownership of the mark features of their appearance which would be likely to induce
the public to believe that the goods offered are those of a
◦ and the registrant's exclusive right to manufacturer or dealer other than the actual manufacturer
use the mark. or dealer or shall give other persons a chance or opportunity
• It is not subject to opposition, although it to do the same with a like purpose.
2. Any person who shall affix, apply, annex
may be cancelled after its issuance. Neither
or use in connection with any goods or services or any
may it be the subject of interference container or containers for goods a false designation of
proceedings. origin or any false description or representation and shall
• Registration on the supplemental register is sell such goods or services.
not constructive notice of registrant's claim 3. Any person who by means of false or
fraudulent representation or declarations orally or in writing
of ownership. or by other fraudulent means shall procure from the patent
• A supplemental register is provided for the office or from any other office which may hereafter be
registration of marks which are not established by law for the purposes the registration of a
registrable on the principal register because trade-name, trade-mark or service mark or of himself as the
owner of such trade-name, trade-mark or service mark or an
of some defects
entry respecting a trade-name, trade-mark or service mark.
prejudicial question
• The proceedings pending before the Patent Section 21-A of Republic Act No. 166
Office involving IPC Co. 1658 do not "Sec. 21-A. Any foreign corporation or juristic person
partake of the nature of a prejudicial to which a mark or tradename has been registered or
question which must first be definitely assigned under this Act may bring an action hereunder for
infringement, for unfair competition, or false designation of
resolved. origin and false description, whether or not it has been
• The case which suspends the criminal licensed to do business in the Philippines under Act
prosecution must be a civil case which is numbered Fourteen Hundred and Fifty-Nine, as amended,
determinative of the innocence or, subject to otherwise known as the Corporation Law, at the time it
the availability of other defenses, the guilt of brings the complaint; Provided, That the country of which
the said foreign corporation or juristic person is a citizen, or
the accused. The pending case before the in which it is domiciled, by treaty, convention or law, grants a
Patent Office is an administrative similar privilege to corporate or juristic persons of the
proceeding and not a civil case. Philippines."
• In the case at bar, the Minister of Trade, as
'the competent authority of the country of Rule I, Sec 1 (g) Omnibus Investment Code(1)
“A foreign firm which does business through middlemen
registration,' has found that among other
acting on their own names, such as indentors, commercial
well-known trademarks 'Lacoste' is the brokers or commission merchants, shall not be deemed
subject of conflicting claims. For this reason, doing business in the Philippines. But such indentors,
applications for its registration must be commercial brokers or commission merchants shall be the
rejected or refused, pursuant to the treaty ones deemed to be doing business in the Philippines.
obligation of the Philippines. "(2) Appointing a representative or distributor who is
domiciled in the Philippines, unless said representative or
Provisions
distributor has an independent status, i.e., it transacts
RPC: Art. 189. Unfair competition, fraudulent registration
business in its name and for its account, and not in the
of trade-mark, trade-name or service mark, fraudulent
name or for the account of a principal. Thus, where a foreign
designation of origin, and false description. — The penalty
firm is represented by a person or local company which
provided in the next proceeding article shall be imposed
does not act in its name but in the name of the foreign firm,
upon:
the latter is doing business in the Philippines."

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

Section 5 of Rule 111 of the Rules of Court KABUSHI KAISHA ISETAN vs. IAC and ISETANN
"A petition for the suspension of the criminal action based DEPARTMENT STORE, INC.
upon the pendency of a pre-judicial question in a civil case,
G.R. No. 75420. November 15, 1991
may only be presented by any party before or during the trial
of the criminal action." Facts:
Petitioner's contention:
PUMA SPORTSCHUHFABRIKEN RUDOLF • Kabushi Kaisha Isetan is the owner of the
DASSLER, K.G., vs. IAC and MIL-ORO trademark "Isetan" and the "Young Leaves
MANUFACTURING CORPORATION Design".
G.R. No. 75067 February 26, 1988 • The petitioner alleges that it first used the
Facts: trademark Isetan on November 5, 1936. It
• Puma filed a complaint for infringement of states that the trademark is a combination
patent or trademark with a prayer for the of "Ise" taken from "Iseya" the first name of
issuance of a writ of preliminary injunction the rice dealer in Kondo, Tokyo in which the
against Mil-Oro establishment was first located and "Tan"
• On July 31, 1985, the trial court issued a which was taken from "Tanji Kosuge the
temporary restraining order, restraining the First".
private respondent and the Director of • The trademark "Isetan" and "Young Leaves
Patents from using the trademark "PUMA' Design" were registered in Japan covering
or any reproduction, counterfeit copy or more than 34 classes of goods. On October
colorable imitation thereof, and to withdraw 3, 1983, the petitioner applied for the
from the market all products bearing the registration of "Isetan" and "Young Leaves
same trademark. Design" with the Philippine Patent Office
• the Court of Appeals reversed the order of under Permanent Serial Nos. 52422 and
the trial court and ordered the respondent 52423 respectively,
judge to dismiss the civil case filed by the Defendant's contention:
petitioner and further held that petitioner • Private respondent, Isetann Department
has no legal capacity to sue under Sec. 21A Store, on the other handclaims that it used
of RA 166 the word "Isetann" as part of its corporated
Ratio Decidendi: name and on its products particularly on
• supra, as in cases of La Chemise Lacoste shirts in Joymart Department Store
and Converse Rubber Corp. sometime in January 1979.
issue of lis pendens • The suffix "Tann" means an altar, the place
• for lis pendens to be a valid ground for the of offering in Chinese and this was adopted
dismissal of a case, the other case pending to harmonize the corporate name and the
between the same parties and having the corporate logo of two hands in cup that
same cause must be a court action. symbolizes the act of offering to the
Supreme Being for business blessing.
• Action means an ordinary suit in a court of • respondent registered "Isetann Department
justice by which one party prosecutes
Store, Inc." and Isetann and Flower Design
another for the enforcement or protection of
in the Philippine Patent Office under SR.
alright, or the prevention or redress of a
Reg. Nos. 4701 and 4714, respectively, as
wrong. Every other remedy is a special
well as with the Bureau of Domestic Trade
proceeding.
under Certificate of Registration No. 32020.
• the Court of Appeals likewise erred in actions
holding that the requisites of lis pendens • On November 28, 1980, the petitioner filed
were present so as to justify the dismissal of with the Phil. Patent Office two (2) petitions
the case for the cancellation of Certificates of

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

Supplemental Registration Nos. SR-4717 any exclusive right to its use


and SR-4701 • Indeed, the Philippines is a signatory to this
• the petitioner also filed with the Securities Treaty and, hence, we must honor our
and Exchange Commission (SEC) a petition obligation thereunder on matters concerning
to cancel the mark "ISETAN" as part of the internationally known or well known marks.
registered corporate name of Isetann However, this Treaty provision clearly
Department Store, Inc. this was however indicated the conditions which must exist
denied by the SEC before any trademark owner can claim and
• Director of Patents dismissed the suit for be afforded rights such as the Petitioner
cancellation of registration filed by petitioner herein seeks and those conditions are that:
• IAC likewise dismissed the case ◦ the mark must be internationally known
Ratio Decidendi: or well known;
• A fundamental principle of Philippine ◦ the subject of the right must be a
Trademarks Law is that actual use in trademark, not a patent or copyright or
commerce in the Philippines is a pre- anything else;
requisite to the acquisition of ownership ◦ the mark must be for use in the same or
over a trademark or a tradename. similar kinds of goods, and
• Adoption alone of a trademark would not ◦ the person claiming must be the owner
give exclusive right thereto. Such right of the mark.
grows out of their actual use. Adoption is not provisions:
use. One may make advertisements, issue Sec. 2 RA 5343
circulars, give out price lists on certain SECTION 2. Appeals to Court of Appeals. — Appeals
to the Court of Appeals shall be filed within fifteen (15) days
goods; but these alone would not give
from notice of the ruling, award, order, decision or judgment
exclusive right of use. For trademark is a or from the date of its last publication, if publication is
creation of use. required by law for its effectivity; or in case a motion for
• The records show that the petitioner has reconsideration is filed within that period of fifteen (15) days,
never conducted any business in the then within ten (10) days from notice or publication, when
Philippines. It has never promoted its required by law, of the resolution denying the motion for
reconsideration. No more than one motion for
tradename or trademark in the Philippines. reconsideration shall be allowed any party. If no appeal is
It has absolutely no business goodwill in the filed within the periods here fixed, the ruling, award, order,
Philippines. Under the law, it has no right to decision or judgment shall become final and may be
the remedy it seeks. executed as provided by existing law.
• Any goodwill, reputation, or knowledge
RA 166
regarding the name Isetann is purely the SECTION 2. & Section 2-A
work of the private respondent. see page 11 herein
• Isetann Department Store, Inc. is the name
of a store and not of products sold in PHILIP MORRIS, et. Al vs. CA and FORTUNE
various parts of the country. TOBACCO CORP
• There is no product with the name "Isetann" G.R. No. 91332. July 16, 1993
popularized with that brand name in the Facts:
Philippines. petitioner's contention:
• The records show that among Filipinos, the • Philip Morris and the 2 other companies as
name cannot claim to be internationally subsidiaries of Philip Morris. The last 2 are
well-known. suing on isolated transactions
• The mere origination or adoption of a • As registered owners of "MARK VII",
particular tradename without actual use "MARK TEN", and "LARK" per certificates of
thereof in the market is insufficient to give registration issued by the Philippine Patent

Jmvdg Trademark Cases 26


Intellectual Property Law
AUF School of Law Atty. Eric Recalde

Office on April 26, 1973, May 28, 1964, and circumstances necessary for the assertion
March 25, 1964, plaintiffs-petitioners of such right should first be affirmatively
asserted that defendant Fortune Tobacco pleaded
Corporation has no right to manufacture • it is not sufficient for a foreign corporation
and sell cigarettes bearing the allegedly suing under Section 21-A to simply allege its
identical or confusingly similar trademark alien origin. Rather, it must additionally
"MARK" in contravention of Section 22 of allege its personality to sue. Relative to this
the Trademark Law, and should, therefore, condition precedent, it may be observed
be precluded during the pendency of the that petitioners were not remiss in averring
case from performing the acts complained their personality to lodge a complaint for
of via a preliminary injunction infringement especially so when they
defendant's contention: asserted that the main action for
• Fortune Tobacco Corporation admitted infringement is anchored on an isolated
petitioners' certificates of registration with transaction
the Philippine Patent Office subject to the • Given these confluence of existing laws
affirmative and special defense on amidst the cases involving trademarks,
misjoinder of party plaintiffs there can be no disagreement to the guiding
• it claims that the word “mark” is a common principle in commercial law that foreign
word which cannot be exclusively corporations not engaged in business in the
appropriated Philippines may maintain a cause of action
Ratio Decidendi: for infringement primarily because of
• there is no proof whatsoever that any of Section 21-A of the Trademark Law when
plaintiffs' products which they seek to the legal standing to sue is alleged, which
protect from any adverse effect of the petitioners have done in the case at hand.
trademark applied for by defendant, is in • the fact that international law has been
actual use and available for commercial made part of the law of the land does not by
purposes anywhere in the Philippines. any means imply the primacy of
Secondly, as shown by plaintiffs' own international law over national law in the
evidence furnished by no less than the chief municipal sphere. Under the doctrine of
of Trademarks Division of the Philippine incorporation as applied in most countries,
Patent Office, Atty. Enrique Madarang, the rules of international law are given a
abandonment of an application is of no standing equal, not superior, to national
moment, for the same can always be refiled. legislative enactments
He said there is no specific provision in the • A fundamental principle of Philippine
rules prohibiting such refiling Trademark Law is that actual use in
• The petitioner will not be prejudiced nor commerce in the Philippines is a pre-
stand to suffer irreparably as a requisite to the acquisition of ownership
consequence of the lifting of the preliminary over a trademark or a tradename.
injunction considering that they are not • In other words, petitioners may have the
actually engaged in the manufacture of the capacity to sue for infringement irrespective
cigarettes with the trademark in question of lack of business activity in the Philippines
and the filing of the counterbond will amply on account of Section 21-A of the
answer for such damages. Trademark Law but the question of whether
• a foreign corporation not doing business in they have an exclusive right over their
the Philippines may have the right to sue symbol as to justify issuance of the
before Philippine Courts, but existing controversial writ will depend on actual use
adjective axioms require that qualifying of their trademarks in the Philippines in line

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

with Sections 2 and 2-A of the same law. same in connection with the goods,
• It is thus incongruous for petitioners to claim business or services specified in the
that when a foreign corporation not licensed certificate, subject to any conditions and
to do business in the Philippines files a limitations stated therein."
complaint for infringement, the entity need • Registration in the Principal Register gives
not be actually using its trademark in rise to a presumption of the validity of the
commerce in the Philippines. Such a foreign registration, the registrant's ownership of
corporation may have the personality to file the mark, and his right to the exclusive use
a suit for infringement but it may not thereof . There is no such presumption in
necessarily be entitled to protection due to registrations in the Supplemental Register.
absence of actual use of the emblem in the • Registration in the Principal Register is
local market. limited to the actual owner of the trademark
• In view of the explicit representation of (Unno Commercial Enterprises v. Gen.
petitioners in the complaint that they are not Milling Corp., 120 SCRA 804 [1983]) and
engaged in business in the Philippines, it proceedings therein pass on the issue of
inevitably follows that no conceivable ownership, which may be contested through
damage can be suffered by them not to opposition or interference proceedings, or
mention the foremost consideration after registration, in a petition for
heretofore discussed on the absence of cancellation.
their "right" to be protected. • Registration in the Principal Register is
• Petition dismissed constructive notice of the registrant's claims
separate opinion: of ownership, while registration in the
Justice FELICIANO: dissenting Supplemental Register is merely proof of
issues: actual use of the trademark and notice that
• is there a clear legal right to the relief asked the registrant has used or appropriated it.
by petitioners in the form of a preliminary • registration in the Principal Register is a
injunction to restrain private respondent basis for an action for infringement, while
from manufacturing, selling and distributing registration in the Supplemental Register is
cigarettes under the trademark "MARK"? not.
• are private respondent's acts complained of • In application for registration in the Principal
by petitioners causing irreparable injury to Register, publication of the application is
petitioners' rights in the premises? necessary. This is not so in applications for
Ratio: registration in the Supplemental Register.
-I- Certificates of registration under both
• the legal effects of registration of a Registers are also different from each other.
trademark in the Principal Register in the • Proof of registration in the Principal Register
Office of the Director of Patents. Section 20 may be filed with the Bureau of Customs to
of R.A. No. 166, as amended, sets out the exclude foreign goods bearing infringing
principal legal effects of such registration: marks while it does not hold true for
◦ "Sec. 20. Certificate of registration registrations in the Supplemental Register."
prima facie evidence of validity. — A • a mere application for registration cannot be
certificate of registration of a mark or a sufficient reason for denying injunctive
trade name shall be prima facie relief, whether preliminary or definitive.
evidence of the validity of the - II -
registration, the registrant's ownership • foreign corporations and corporations
of the mark or trade name, and of the domiciled in a foreign country are not
registrant's exclusive right to use the disabled from bringing suit in Philippine

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Intellectual Property Law
AUF School of Law Atty. Eric Recalde

courts to protect their rights as holders of use of its confusingly similar trademark
trademarks registered in the Philippines. "MARK" is invasive and destructive of
• Article 2, paragraph 1 of the Paris petitioners' property right in their registered
Convention embodies the principle of trademarks
"national treatment" or "assimilation with • Modern authorities on trademark law view
nationals," one of the basic rules of the trademarks as symbols which perform three
Convention. (3) distinct functions:
• Article 2 paragraph 2 of the Paris ◦ first, they indicate origin or ownership of
Convention restrains the Philippines from the articles to which they are attached;
imposing a requirement of local ◦ second, they guarantee that those
incorporation or establishment of a local articles come up to a certain standard of
domicile as a pre-requisite for granting to quality;
foreign nationals the protection which ◦ third, they advertise the articles they
nationals of the Philippines are entitled to symbolize.
under Philippine law in respect of their • "Modern law recognizes that the protection
industrial property rights. to which the owner of a trade-mark is
• a corporate national of a member country of entitled is not limited to guarding his goods
the Paris Union is entitled to bring in or business from actual market competition
Philippine courts an action for infringement with identical or similar products of the
of trademarks, or for unfair competition, parties, but extends to all cases in which the
without necessity for obtaining registration use by a junior appropriator of a trade-mark
or a license to do business in the or trade-name is likely to lead to a confusing
Philippines, and without necessity of of source, as where prospective purchasers
actually doing business in the Philippines. would be misled into thinking that the
• That petitioners are not doing business and complaining party has extended his
are not licensed to do business in the business into the field (see 148 ALR 56 et
Philippines, does not by any means mean seq; 52 Am. Jur. 576) or is in any way
either that petitioners have not complied connected with the activities of the infringer;
with the requirements of Section 12 of R.A. or when it forestalls the normal potential
No. 166 relating to affidavits of continued expansion of his business
use, or that petitioners' trademarks are not • Damages are irreparable within the
in fact used in trade and commerce in the meaning of the rule relative to the issuance
Philippines. of injunction where there is no standard by
- III - which their amount can be measured with
• That petitioners are not doing business and reasonable accuracy
are not licensed to do business in the
Philippines, does not necessarily mean that
petitioners are not in a position to sustain,
and do not in fact sustain, damage through
trademark infringement on the part of a local
enterprise.
• The damage which petitioners claim they
are sustaining by reason of the acts of
private respondents, are not limited to
impact upon the volume of actual imports
into the Philippines of petitioners' cigarettes.
Petitioners urge that private respondent's

Jmvdg Trademark Cases 29