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This document summarizes a court case between Pearl & Dean Inc. and Shoemart regarding alleged trademark, copyright, and patent infringement. The Regional Trial Court ruled in favor of Pearl & Dean but the Court of Appeals reversed this decision. Specifically:
1) The Court of Appeals found no copyright infringement because Pearl & Dean's copyright was limited to engineering drawings of the light boxes, not the boxes themselves.
2) There was also no patent infringement because Pearl & Dean did not secure a patent for the light boxes.
3) Regarding trademark infringement, the court determined the term "Poster Ads" was generic and thus an invalid trademark.
4) Finally, there was no unfair competition because
This document summarizes a court case between Pearl & Dean Inc. and Shoemart regarding alleged trademark, copyright, and patent infringement. The Regional Trial Court ruled in favor of Pearl & Dean but the Court of Appeals reversed this decision. Specifically:
1) The Court of Appeals found no copyright infringement because Pearl & Dean's copyright was limited to engineering drawings of the light boxes, not the boxes themselves.
2) There was also no patent infringement because Pearl & Dean did not secure a patent for the light boxes.
3) Regarding trademark infringement, the court determined the term "Poster Ads" was generic and thus an invalid trademark.
4) Finally, there was no unfair competition because
This document summarizes a court case between Pearl & Dean Inc. and Shoemart regarding alleged trademark, copyright, and patent infringement. The Regional Trial Court ruled in favor of Pearl & Dean but the Court of Appeals reversed this decision. Specifically:
1) The Court of Appeals found no copyright infringement because Pearl & Dean's copyright was limited to engineering drawings of the light boxes, not the boxes themselves.
2) There was also no patent infringement because Pearl & Dean did not secure a patent for the light boxes.
3) Regarding trademark infringement, the court determined the term "Poster Ads" was generic and thus an invalid trademark.
4) Finally, there was no unfair competition because
- Dinnah Mae TOPIC: Trademark, Copyright, Patent Definitions Pearl and Dean (Pearl) is a corporation engaged in the manufacture of advertising display units simply referred to as light boxes (using specially printed posters sandwiched between plastic sheets and illuminated with back lights). o had a Certificate of Copyright Registration dated January 20, 1981 over these o These were also marketed under the trademark "Poster Ads". The application for registration of the trademark was filed with the Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983 and approved only on September 12, 1988 o From 1981 to about 1988, Pearl employed the services of Metro Industrial Services (MIS) to manufacture its advertising displays. (1985) Pearl negotiated with Shoemart, Inc. (SMI) for the lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under construction, SMI offered to change this to SM Makati and SM Cubao, to which pearl agreed. Only the contract for SM Makati was signed. Vergara (Pearls Gen. Manager) reminded SMI that their agreement for installation of light boxes was not only for its SM Makati branch, but also for SM Cubao but SMI did not bother to reply. SMI said, in a letter, that it was rescinding the contract for SM Makati due to non-performance of the terms thereof. Vergara protested the unilateral action of SMI for being without basis and also pushed for the signing of the contract for SM Cubao. Two years later, MIS offered to construct light boxes for Shoemarts chain of stores. SMI approved (10 units were made). SMI also later engaged the services of EYD Rainbow Advertising Corporation to make the light boxes (300 units) (1989) Pearl found out that aside from SM City and SM Cubao, light boxes similar to those it manufactures were installed in two (2) other SM stores. It further discovered that North Edsa Marketing Inc. or NEMI (SMIs sister company), through its marketing arm, Prime Spots Marketing Services, was set up primarily to sell advertising space in lighted display units located in SMIs different branches. (1991) Pearl sent letters to both SMI and NEMI: o enjoining them to cease using the subject light boxes and to remove the same from SMIs establishments. o Demanding the discontinued use of the trademark "Poster Ads," o Asking payment of compensatory damages (P20,000,000.00). Upon receipt, SMI suspended the leasing of 224 light boxes and NEMI took down its advertisements for "Poster Ads" from the lighted display units in SMIs stores. For failure to meet all the demands, Pearl filed this instant case for infringement of trademark and copyright, unfair competition and damages. SMI: it independently developed its poster panels using commonly known techniques and available technology, without notice of or reference to Pearl and Deans copyright. registration of the mark "Poster Ads" was only for stationeries such as letterheads, envelopes, and the like. the word "Poster Ads" is a generic term which cannot be appropriated as a trademark, and, as such, registration of such mark is invalid. Pearls advertising display units contained no copyright notice, in violation of Section 27 of P.D. 49. SMI also counterclaimed for moral, actual and exemplary damages and for the cancellation of Pearl and Deans Certification of Copyright Registration and Certificate of Trademark Registration NEMI: denied having manufactured, installed or used any advertising display units, nor having engaged in the business of advertising. It repleaded SMIs averments, admissions and denials and prayed for similar reliefs and counterclaims as SMI. RTC Makati: decided in favor of Pearl CA: reversed the trial court: ISSUES: 1. WON there was copyright infringement. NO 2. WON there was patent infringement. NO 3. WON there was trademark infringement. NO 4. WON there was unfair competition. NO RULING: 1. ON THE ISSUE OF COPYRIGHT INFRINGEMENT PEARL: infringement on its copyright over the light boxes when SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own account, premised on its belief that its copyright over the engineering drawings extended ipso facto to the light boxes depicted or illustrated in said drawings. COURT: copyright was limited to the drawings alone and not to the light box itself. First, petitioners application for a copyright certificate clearly stated that it was for a class "O" work under Section 2 (O) of PD 49 (The Intellectual Property Decree)[1], although petitioners copyright certificate was entitled "Advertising Display Units" (which depicted the box-type electrical devices) Copyright, in the strict sense of the term, is purely a statutory right thus covering only the works falling within the statutory enumeration or description. o Pearl secured its copyright under the classification class "O" work. Thus its copyright protection extended only to the technical drawings (within the category of "pictorial illustrations." ) and not to the light box itself because the latter was not at all in the category of "prints, pictorial illustrations, advertising copies, labels, tags and box wraps." o the light box was not a literary or artistic piece which could be copyrighted under the copyright law. The lack of statutory authority to make the light box copyrightable cannot be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as "Advertising Display Units." During the trial, the president of Pearl himself admitted that the light box was neither a literary not an artistic work but an "engineering or marketing invention." in Kho v. CA Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. o A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. A trade name means the name or designation identifying or distinguishing an enterprise. o Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. o Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. 2. ON THE ISSUE OF PATENT INFRINGEMENT petitioner never secured a patent for the light boxes thus it could not legally prevent anyone from manufacturing or commercially using the contraption. Creser Precision Systems, Inc. vs. Court of Appeals: "there can be no infringement of a patent until a patent has been issued, since whatever right one has to the invention covered by the patent arises alone from the grant of patent. o An inventor has no common law right to a monopoly of his invention. He has the right to make use of and vend his invention, but if he voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives the inventor the right to exclude all others. As a patentee, he has the exclusive right of making, selling or using the invention. It was passed for the purpose of encouraging useful invention and promoting new and useful inventions by the protection and stimulation given to inventive genius, and was intended to secure to the public, after the lapse of the exclusive privileges granted the benefit of such inventions and improvements. The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention; second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public." It is only after an exhaustive examination by the patent office that a patent is issued. There is no such scrutiny in the case of copyrights nor any notice published before its grant to the effect that a person is claiming the creation of a work. The law confers the copyright from the moment of creation and the copyright certificate is issued upon registration with the National Library of a sworn ex-parte claim of creation. Baker v Selden: only the expression of an idea is protected by copyright, not the idea itself. (see original case for a discussion on Baker) 3. ON THE ISSUE OF TRADEMARK INFRINGEMENT This issue concerns the use by respondents of the mark "Poster Ads" which petitioners president said was a contraction of "poster advertising." Pearl was able to secure a trademark certificate for it, but one where the goods specified were "stationeries such as letterheads, envelopes, calling cards and newsletters." Petitioner admitted it did not commercially engage in or market these goods. On the contrary, it dealt in electrically operated backlit advertising units and the sale of advertising spaces thereon, which, however, were not at all specified in the trademark certificate. Section 20 of the old Trademark Law, ruled that "the certificate of registration issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations specified in the certificate x x x. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description." Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the failure of Pearl to secure a trademark registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof.1wphi1 4. ON THE ISSUE OF UNFAIR COMPETITION While the petitioners complaint in the RTC also cited unfair competition, the trial court did not find private respondents liable therefor. Petitioner did not appeal this particular point; hence, it cannot now revive its claim of unfair competition. But even disregarding procedural issues, we nevertheless cannot hold respondents guilty of unfair competition. o Even a name or phrase incapable of appropriation as a trademark or trade name may, by long and exclusive use by a business (such that the name or phrase becomes associated with the business or product in the mind of the purchasing public), be entitled to protection against unfair competition. o Here, there was no evidence that Pearls use of "Poster Ads" was distinctive or well-known. o Poster Ads was too generic a name. So it was difficult to identify it with any company. This prevented the application of the doctrine of secondary meaning. "Secondary meaning" means that a word or phrase originally incapable of exclusive appropriation with reference to an article in the market (because it is geographically or otherwise descriptive) might nevertheless have been used for so long and so exclusively by one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his property. WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22, 2001 is AFFIRMED in toto.
[1] SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the following works: x x x x x x x x x (O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
2. Pribhdas J. Mirpuri v. Court of Appeals, G.R. 114508, November 19, 1999. - Jen Topic: definition, function, and history of trademark, Paris Convention Facts: 1. June 15, 1970: Escobar filed an application with the Bureau of Patents for the registration of the trademark Barbizon for use in brassieres and ladies undergarments (case docketed as IPC 686). She alleged that they have been manufacturing and selling these products under the firm name "L & BM Commercial" since March 3, 1970. 2. Private respondent reported Barbizon Corporation, a corporation organized and doing business under the laws of New York, USA, opposed the application. It was alleged that its trademark is confusingly similar with that of Escobar and that the registration of the said trademark will cause damage to its business reputation and goodwill. 3. In 1974, the Director of Patents gave due course to Escobars application and dismissed the opposition. Escobar later assigned all his rights and interest over the trademark to petitioner. 4. In 1979, however, Escobar failed to file with the Bureau of Patents the affidavit of use of the trademark required under Sec. 12 of RA 166. Due to this failure, the Bureau cancelled Escobars certificate of registration. 5. In 1981, Escobar and petitioner separately filed this application for registration of the same trademark. (case docketed as IPC 2049). Private respondent opposed again. 6. March 2, 1982, Escobar assigned to petitioner the use of the business name "Barbizon International." Petitioner registered the name with the DTI for which a certificate of registration was issued in 1987. Private respondent filed before the Office of Legal Affairs of the DTI a petition for cancellation of petitioner's business name, which was given due course. 7. Meanwhile, in IPC No. 2049, the Director of Patents rendered a decision declaring private respondent's opposition barred by res judicata and giving due course to petitioner's application for registration. Petitioner: (1) "Barbizon" products have been sold in the Philippines since 1970. Petitioner developed this market by working long hours and spending considerable sums of money on advertisements and promotion of the trademark and its products. Now, almost thirty years later, private respondent, a foreign corporation, "swaggers into the country like a conquering hero," usurps the trademark and invades petitioner's market. Justice and fairness dictate that private respondent be prevented from appropriating what is not its own. (2) private respondent is barred from questioning petitioner's ownership of the trademark because of res judicata. Private Respondent: This time it alleged (1) prior use and registration of the trademark in the United States and other countries worldwide, prior use in the Philippines (2) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC. Issue: W/N IPC No. 686 and IPC No. 2049 involve the same cause of action (One of the requisites of res judicata is identical causes of action) NO
Held: 1. The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. The Convention is essentially a compact among various countries which, as members of the Union, have pledged to accord to citizens of the other member countries trademark and other rights comparable to those accorded their own citizens by their domestic laws for an effective protection against unfair competition. In short, foreign nationals are to be given the same treatment in each of the member countries as that country makes available to its own citizens. Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property. Art. 6bis governs protection of well-known trademarks. Under the first paragraph, each country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation or translation, or any essential part of which trademark constitutes a reproduction, liable to create confusion, of a mark considered by the competent authority of the country where protection is sought, to be well- known in the country as being already the mark of a person entitled to the benefits of the Convention, and used for identical or similar goods. Art. 6bis was first introduced at The Hague in 1925 and amended in Lisbon in 1952. It is a self-executing provision and does not require legislative enactment to give it effect in the member country. It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention, after its ratification according to the public law of each state and the order for its execution. The essential requirement under Article 6bis is that the trademark to be protected must be "well-known" in the country where protection is sought. Both the Villafuerte and Ongpin Memoranda were sustained by the Supreme Court in the 1984 landmark case ofLa Chemise Lacoste, S.A. v. Fernandez. 60 This court ruled therein that under the provisions of Article 6bis of the Paris Convention, the Minister of Trade and Industry was the "competent authority" to determine whether a trademark is well-known in this country. (in relation to the 2 memoranda released by DTI providing a list of well-known foreign marks) 2. The Villafuerte Memorandum was issued in 1980, i.e., fifteen (15) years after the adoption of the Paris Convention in 1965. In the case at bar, the first inter partes case, IPC No. 686, was filed in 1970, before the Villafuerte Memorandum but five (5) years after the effectivity of the Paris Convention. Article 6bis was already in effect five years before the first case was instituted. Private respondent, however, did not cite the protection of Article 6bis, neither did it mention the Paris Convention at all. It was only in 1981 when IPC No. 2049 was instituted that the Paris Convention and the Villafuerte Memorandum, and, during the pendency of the case, the 1983 Ongpin Memorandum were invoked by private respondent. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the trademark in the US and other countries, and the international recognition of the trademark established by extensive use and advertisement of respondents products for over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents claims originator of the word and symbol Barbizon, as the first and registered user of the mark attached to its products which have been sold and advertised would arise for a considerable number of years prior to petitioners first application. Indeed, these are substantial allegations that raised new issues and necessarily gave respondents a new cause of action.
Moreover, the cancellation of petitioners certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose the second application.
It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independent from each other, although out of the same contract, transaction, or state of facts, may be sued on separately. Recovery on one is no bar to subsequent actions on others. The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operating as res judicata, such as where the actions are based on different statutes. 3. A "trademark" is defined under R.A. 166, the Trademark Law, as including "any word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured, sold or dealt in by others. This definition has been simplified in R.A. No. 8293, the Intellectual Property Code of the Philippines, which defines a "trademark" as "any visible sign capable of distinguishing goods." In Philippine jurisprudence, the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. Modern authorities on trademark law view trademarks as performing three distinct functions: (1) they indicate origin or ownership of the articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise the articles they symbolize. Archaeological discoveries of ancient Greek and Roman inscriptions on sculptural works, paintings, vases, precious stones, glassworks, bricks, etc. reveal some features which are thought to be marks or symbols. These marks were affixed by the creator or maker of the article, or by public authorities as indicators for the payment of tax, for disclosing state monopoly, or devices for the settlement of accounts between an entrepreneur and his workmen. In the Middle Ages, the use of many kinds of marks on a variety of goods was commonplace. Fifteenth century England saw the compulsory use of identifying marks in certain trades. There were the baker's mark on bread, bottlemaker's marks, smith's marks, tanner's marks, watermarks on paper, etc. Every guild had its own mark and every master belonging to it had a special mark of his own. The marks were not trademarks but police marks compulsorily imposed by the sovereign to let the public know that the goods were not "foreign" goods smuggled into an area where the guild had a monopoly, as well as to aid in tracing defective work or poor craftsmanship to the artisan. For a similar reason, merchants also used merchants' marks. Merchants dealt in goods acquired from many sources and the marks enabled them to identify and reclaim their goods upon recovery after shipwreck or piracy. With constant use, the mark acquired popularity and became voluntarily adopted. It was not intended to create or continue monopoly but to give the customer an index or guarantee of quality. It was in the late 18th century when the industrial revolution gave rise to mass production and distribution of consumer goods that the mark became an important instrumentality of trade and commerce. By this time, trademarks did not merely identify the goods; they also indicated the goods to be of satisfactory quality, and thereby stimulated further purchases by the consuming public. Eventually, they came to symbolize the goodwill and business reputation of the owner of the product and became a property right protected by law. The common law developed the doctrine of trademarks and tradenames "to prevent a person from palming off his goods as another's, from getting another's business or injuring his reputation by unfair means, and, from defrauding the public." Subsequently, England and the United States enacted national legislation on trademarks as part of the law regulating unfair trade. It became the right of the trademark owner to exclude others from the use of his mark, or of a confusingly similar mark where confusion resulted in diversion of trade or financial injury. At the same time, the trademark served as a warning against the imitation or faking of products to prevent the imposition of fraud upon the public. Today, the trademark is not merely a symbol of origin and goodwill; it is often the most effective agent for the actual creation and protection of goodwill. It imprints upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfaction. In other words, the mark actually sells the goods. The mark has become the "silent salesman," the conduit through which direct contact between the trademark owner and the consumer is assured. It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of the article to which it refers. In the last half century, the unparalleled growth of industry and the rapid development of communications technology have enabled trademarks, tradenames and other distinctive signs of a product to penetrate regions where the owner does not actually manufacture or sell the product itself. Goodwill is no longer confined to the territory of actual market penetration; it extends to zones where the marked article has been fixed in the public mind through advertising. Whether in the print, broadcast or electronic communications medium, particularly on the Internet, advertising has paved the way for growth and expansion of the product by creating and earning a reputation that crosses over borders, virtually turning the whole world into one vast marketplace. Intellectual and industrial property rights cases are not simple property cases. Trademarks deal with the psychological function of symbols and the effect of these symbols on the public at large. Trademarks play a significant role in communication, commerce and trade, and serve valuable and interrelated business functions, both nationally and internationally. For this reason, all agreements concerning industrial property, like those on trademarks and tradenames, are intimately connected with economic development. Industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs. They speed up transfer of technology and industrialization, and thereby bring about social and economic progress. These advantages have been acknowledged by the Philippine government itself. The Intellectual Property Code of the Philippines declares that "an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, it attracts foreign investments, and ensures market access for our products.
3. Jessie Ching v. William Salinas, G.R. 161295, June 29, 2005. - Kristina Title: Jessie Ching vs. William Salinas Concept/Topic: Definitions; differentiation among patent, trademark and copyright; utility model; copyright; works entitled to protection
Facts Petitioner = Jessie G. Ching who is the owner and general manager of Jeshicris Manufacturing Co., the maker and manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of plastic Respondents = William Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product Corporation alleged to be reproducing and distributing the model September 4, 2001: Ching and Joseph Yu were issued by the National Library Certificates of Copyright Registration and Deposit of the work described as "Leaf Spring Eye Bushing for Automobile September 20, 2001: Ching requested the NBI for assistance for the apprehension and prosecution of illegal manufacturers, producers and/or distributors of the works NBI filed applications for search warrants in the RTC of Manila against respondents. The application sought the seizure of the following items: o Undetermined quantity of Leaf spring eye bushing for automobile that are made up of plastic polypropylene and of polyvinyl chloride plastic; o Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride plastic; o Undetermined quantity of Dies and jigs, patterns and flasks used in the manufacture/fabrication of items above; o Evidences of sale which include delivery receipts, invoices and official receipts The RTC issued the search warrant; the NBI seized the following items: o Leaf Spring eye bushing: Plastic Polypropylene, Polyvinyl Chloride Plastic, Vehicle bearing cushion o Diesel Molds Respondents moved to quash the search warrant on the ground that the copyright registrations were issued in violation of the IP Law because: o the subject matter of the registrations are not artistic or literary; o the subject matter of the registrations are not original; o they are the proper subject of a patent, not copyright Petitioner opposed the motion saying that the court which issued the search warrant was not the proper forum to contest the copyright registration RTC quashed the search warrant; it ruled that the work covered by the copyright pertained to solutions to technical problems Petitioners filed a petition for certiorari before the CA which dismissed the petition Petitioners filed the petition for review on certiorari before the SC. Issue(s): 1. WON the RTC had the jurisdiction to resolve the case/issue the search warrants? YES 2. WON the work in question is a proper subject of a copyright? NO Petr: 1. The revocation of his copyright certificates should be raised in a direct action and not in a search warrant proceeding 2. The determination of probable cause to justify the issuance of a search warrant does not concern the issue of whether or not the alleged work is copyrightable. The issue of probable cause should be resolved without invalidating his copyright 3. Assuming that the trial court may resolve the validity of his copyright in a proceeding to quash a search warrant, the RTC committed a grave abuse of its discretion when it declared that his works are not copyrightable in the first place because under Section 172.1(h) of the IP Law, literary and artistic works include original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design and other works of applied art 4. The law does not provide that the intended use or use in industry of an article eligible for patent bars or invalidates its registration under the Law on Copyright Resp: 1. The work of the petitioner is essentially a technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e., from rubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strong enough to endure pressure brought about by the vibration of the counter bearing and thus brings bushings. Such work may be the subject of a patent, and not of a copyright 2. Certificates issued by the National Library are only certifications that, at a point in time, a certain work was deposited in the said office. The registration of copyrights does not provide for automatic protection Held: Petition DENIED. Ratio: The RTC had jurisdiction to delve into and resolve the issue whether the petitioners utility models are copyrightable and, if so, whether he is the owner of a copyright over the said models. The RTC was duty-bound to determine whether probable cause existed in accordance with the Rules of Court. o Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19: In the determination of probable cause, the court must necessarily resolve whether or not an offense exists to justify the issuance of a search warrant or the quashal of one already issued by the court. o For the RTC to determine whether the crime for infringement under the IP Law is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie Ching and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was being copied and distributed by the respondents. Thus, the ownership of a valid copyright is essential. x x x The applicant must demonstrate the existence and the validity of his copyright because in the absence of copyright protection, even original creation may be freely copied. Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion are not literary or artistic works. They are not intellectual creations in the literary and artistic domain, or works of applied art. They are certainly not ornamental designs or one having decorative quality or value. (Pls refer to Section 172.1(h) and Section 171.10 of IP Law) o As gleaned from the specifications appended to the application for a copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described as comprising a generally cylindrical body having a co- axial bore that is centrally located and provided with a perpendicular flange on one of its ends and a cylindrical metal jacket surrounding the peripheral walls of said body, with the bushing made of plastic that is either polyvinyl chloride or polypropylene. Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a generally semi- circular body having a central hole to secure a conventional bearing and a plurality of ridges provided therefore, with said cushion bearing being made of the same plastic materials. Focus of copyright is the usefulness of the artistic design, and not its marketability. The central inquiry is whether the article is a work of art. Works for applied art include all original pictorials, graphics, and sculptural works that are intended to be or have been embodied in useful article regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection. While works of applied art, original intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design are not. A useful article may be copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article. o In this case, the petitioners models are not works of applied art, nor artistic works. They are utility models, useful articles, albeit with no artistic design or value. (Pls read case for the description of the model) o A utility model is a technical solution to a problem in any field of human activity which is new and industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the aforesaid. A utility model refers to an invention in the mechanical field. This is the reason why its object is sometimes described as a device or useful object. A utility model varies from an invention, for which a patent for invention is, likewise, available, on at least three aspects: (1) the requisite of "inventive step" in a patent for invention is not required; (2) the maximum term of protection is only seven years compared to a patent which is twenty years, both reckoned from the date of the application; and (3) the provisions on utility model dispense with its substantive examination and prefer for a less complicated system. Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of the IP Law. Applying the principle of ejusdem generis, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature as the works enumerated in Section 172 of the IP Law. That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuance of a search warrant for violation of copyright laws. o Kho v. Court of Appeals and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated: The Court ruled that "these copyright and patent rights are completely distinct and separate from one another, and the protection afforded by one cannot be used interchangeably to cover items or works that exclusively pertain to the others." o Definitions: (1) A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. (2) Copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. (3) Patentable inventions refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. 4. Hoffman vs. Le Traunik, 209 Federal Reporter 375, 379 (1913).-Poy HOFFMAN v. LE TRAUNIK District Court, N.D. New York 209 F. 375; 1913 U.S. Dist. LEXIS 1116 December 8, 1913 CASE SUMMARY PROCEDURAL POSTURE: Complainant writer brought suit for a preliminary injunction against defendant performers for alleged copyright violations regarding certain parts of monologues. OVERVIEW: Complainant had copyrighted certain monologues in parts. Each part was a separate and distinct monologue. The monologues came within no definition of "literature" proper but came under the heading of light literature. Defendants began reciting their own monologue similar in nature to complainant's. Complainant was denied an injunction against defendants for alleged copyright violations. So long as defendants averred that the expressions were not new with complainant, but were common property and used on the stage prior to the writing of complainant's monologues, a preliminary injunction could not issue. No public interest was involved, and any damage to complainant would not have been very serious. Defendants did not copy substantially the plan, arrangement, or combination of materials found in complainant's monologues. OUTCOME: The court denied the injunction because complainant did not prove that the expressions in the monologue were original, and the situation was not serious enough to warrant an injunction before a full trial on the merits.
CORE TERMS: monologue, originated, poor man, copyrighted, drink, eggs, misrepresentatives, aggravation, sterilized, pleasure, sentences, recited, undress, streets, navy, common property, preliminary injunction, substantial part, childhood, speakers, weather, walking, copying, star, boat, meat, wives, moving papers, dear friends, original plan If asked about the monologue being copyrighted, just answer: Sir, its a sequence of 14 monologues, described by the court to be gags or jokes that seem to connote political overtones with titles such as the German Senator or the German politician
Doctrines: Civil Procedure > Remedies > Injunctions > Preliminary & Temporary Injunctions HN1 The rule is that preliminary injunctions will not issue except in the clearest cases.
Copyright Law > Subject Matter > Statutory Copyright & Fixation > Originality Requirements > General Overview HN2 To be entitled to be copyrighted, the composition must be original, meritorious, and free from illegality or immorality.
Copyright Law > Ownership Interests > General Overview Copyright Law > Subject Matter > Statutory Copyright & Fixation > Originality Requirements > General Overview HN3 A work, in order to be copyrighted, must be original in the sense that the author has created it by his own skill, labor, and judgment, without directly copying or evasively imitating the work of another.
Copyright Law > Subject Matter > Statutory Copyright & Fixation > Originality Requirements > General Overview HN4 A new and original plan, arrangement, or combination of materials will entitle the author to a copyright therein, whether the materials themselves be new or old.
Copyright Law > Civil Infringement Actions > Elements > Copying by Defendants Copyright Law > Civil Infringement Actions > Presumptions & Requirements > General Overview HN5 Copying the whole or a substantial part of a copyrighted work constitutes, and is an essential element of, infringement. It is not confined to literal repetition or reproduction, but includes also the various modes in which the matter of any work may be adopted, imitated, transferred, or reproduced with more or less colorable alteration to disguise the piracy. But, on the principle of de minimis non curat lex, it is necessary that a substantial part of the copyrighted work be taken.
Civil Procedure > Remedies > Injunctions > Preliminary & Temporary Injunctions Copyright Law > Civil Infringement Actions > General Overview Evidence > Procedural Considerations > Burdens of Proof > General Overview HN6 It must be established by the complainant that works were original with the person accused of copyright infringement. The burden is on him to show this, and with complainant making affidavit one way and the defendants the other, and a sworn answer also interposed, a clear and satisfactory case on such a subject is not made for the drastic use of a preliminary injunction.
5. Air Philippines Corporation v. Pennswell, Inc., G.R. 172835, December 13, 2007. - Dane Air Philippines Corporation v. Pennswell, Inc. (G.R. 172835, December 13, 2007, CHICO-NAZARIO, J) Topic: Trade Secrets FACTS: Parties: o Petitioner Air Philippines: domestic corporation for air transportation services o Respondent Pennswell, Inc: manufacturer and seller of industrial chemicals, solvents, and special lubricants Pennswell delivered and sold to Air Philippines sundry goods in trade, covered by 4 Sales Invoices with corresponding Purchase Orders o AirPhils total outstanding obligation = P449,864.98 with 14% per annum interest until full payment o AirPhil failed to pay Pennswell filed a Complaint for a Sum of Money against AirPhil o Answer by AirPhil alleged that refusal to pay was with valid and justifiable reasons Pennswell defraud it of P592,000.00 for its previous sale of four items. The items were misrepresented (by alteration of names and labels of goods) as belonging to a new line but truly are identical with products AirPhil had previously purchased from Pennswell The products: Excellent Rust Corrosion, Connector Grease, Electric Strength Protective Coating, and Anti-Seize Compound, are identical with its Anti-Friction Fluid, Contact Grease, Thixohtropic Grease, and Dry Lubricant, respectively thus, if Pennswell was forthright about the identical character of the products, AirPhil would not have purchased the items complained of When fraud was known, conference was held. Agreement: respondent would return to petitioner the amount it previously paid Petitioner was surprised when it received a letter from the respondent, demanding payment of the amount of P449,864.94 (subject matter Complaint for Collection of a Sum of Money against petitioner) Petitioner filed a Motion to Compel respondent to give a detailed list of the ingredients and chemical components of the following products: a) Contact Grease and Connector Grease; (b) Thixohtropic Grease and Di-Electric Strength Protective Coating; and (c) Dry Lubricant and Anti-Seize Compound o RTC granted petitioners motion. [Respondent] Pennswell, Inc. is given fifteen (15) days from receipt of this Order to submit to [petitioner] Air Philippines Corporation the chemical components of all the above-mentioned products for chemical comparison/analysis. Respondent sought reconsideration of THE Order, contending that o It cannot be compelled to disclose the chemical components sought because the matter is confidential its products are specialized lubricants, and if their components were revealed, its business competitors may easily imitate and market the same types of products, in violation of its proprietary rights and to its serious damage and prejudice o What petitioner endeavored to inquire upon constituted a trade secret which respondent cannot be forced to divulge RTC: reversed itself Order found chemical components are respondents trade secrets and are privileged in character o Petitioner filed a Petition for Certiorari under Rule 65 with the Court of Appeals CA: denied the Petition and affirmed the Order reasoning that to compel respondent to reveal in detail the list of ingredients of its lubricants is to disregard respondents rights over its trade secrets given that the chemical formulation of respondents products and their ingredients are embraced within the meaning of trade secrets o MR denied ISSUE: Whether or not the chemical components or ingredients of respondents products are trade/industrial secrets that are not subject to compulsory disclosure Petitioners contention: It has a right to obtain the chemical composition and ingredients of respondents products to conduct a comparative analysis of its products\ The matters are not trade secrets, which are protected by law and beyond public scrutiny RULING: Affirm CA; rule against petitioner A trade secret is o a plan or process, tool, mechanism or compound known only to its owner and those of his employees to whom it is necessary to confide it o includes, a secret formula or process not patented, but known only to certain individuals using it in compounding some article of trade having a commercial value o may consist of any formula, pattern, device, or compilation of information that: is used in one's business; and gives the employer an opportunity to obtain an advantage over competitors who do not possess the information o Generally, a trade secret is a process or device intended for continuous use in the operation of the business, for example, a machine or formula, but can be a price list or catalogue or specialized customer list o Indubitable that trade secrets constitute proprietary rights The inventor, discoverer, or possessor of a trade secret or similar innovation has rights therein which may be treated as property ordinarily an injunction will be granted to prevent the disclosure of the trade secret by one who obtained the information "in confidence" or through a "confidential relationship" o According to American jurisprudence, the following are factors considered in determining if an information is a trade secret: the extent to which the information is known outside of the employer's business; the extent to which the information is known by employees and others involved in the business; the extent of measures taken by the employer to guard the secrecy of the information; the value of the information to the employer and to competitors; the amount of effort or money expended by the company in developing the information; and the extent to which the information could be easily or readily obtained through an independent source o In Cocoland Development Corporation v. NLRC (involving the legality of an employees termination on the ground of unauthorized disclosure of trade secrets): any determination by management as to the confidential nature of technologies, processes, formulae or other so-called trade secrets must have a substantial factual basis, which can pass judicial scrutiny The chemical composition, formulation, and ingredients of respondents special lubricants are trade secrets within the contemplation of the law o Respondent was established to engage in the business of general manufacturing and selling of, and to deal in, distribute, sell or otherwise dispose of goods, wares, merchandise, products, including but not limited to industrial chemicals, solvents, lubricants, acids, alkalies, salts, paints, oils, varnishes, colors, pigments and similar preparations, among others o Unmistakable that the manufacture and production of respondents products proceed from a formulation of a secret list of ingredients The ingredients constitute the very fabric of respondents production and business. No doubt, the information is also valuable to respondents competitors To compel its disclosure is to cripple respondents business, given that if the chemical composition of respondents lubricants are opened to public scrutiny, it will stand to lose the backbone on which its business is founded and would result in nothing less than the probable demise of respondents business Thus, respondents proprietary interest over the ingredients which it had developed and expended money and effort on is incontrovertible and that the detailed ingredients sought to be revealed have a commercial value to respondent This information grants it a competitive advantage and there was deliberate intent on the part of the respondent to keep the information confidential and not available to the prying public Section 1, Rule 27 of the Rules of Court allows parties to inspect documents or things upon a showing of good cause before the court in which an action is pending o However, the documents, papers, books, accounts, letters, photographs, objects or tangible things that may be produced and inspected should not be privileged o Moreover, while Section 24 of Rule 130 of the Rules of Court enumerates disqualification of testimony by reason of privileged communication this listing of privileged matters is not exclusive other privileged matters not mentioned by Rule 130 are editors may not be compelled to disclose the source of published news; voters may not be compelled to disclose for whom they voted; trade secrets; information contained in tax census returns; and (d) bank deposits The ff are laws that provide protection for trade secrets: o Interim Rules of Procedure on Government Rehabilitation: that the court may issue an order to protect trade secrets or other confidential research, development, or commercial information belonging to the debtor o Securities Regulation Code: Securities and Exchange Commission is not required or authorized to require the revelation of trade secrets or processes in any application, report or document filed with the Commission, thus the SEC can deny a request of any member of the general public to have access to any information filed with it o Revised Penal Code also protects trade secrets under the following articles: Art. 291. Revealing secrets with abuse of office. The penalty of arresto mayor and a fine not exceeding 500 pesos shall be imposed upon any manager, employee or servant who, in such capacity, shall learn the secrets of his principal or master and shall reveal such secrets. Art. 292. Revelation of industrial secrets. The penalty of prision correccional in its minimum and medium periods and a fine not exceeding 500 pesos shall be imposed upon the person in charge, employee or workman of any manufacturing or industrial establishment who, to the prejudice of the owner thereof, shall reveal the secrets of the industry of the latter. o Republic Act No. 8424, National Internal Revenue Code of 1997 SECTION 278. Procuring Unlawful Divulgence of Trade Secrets. - Any person who causes or procures an officer or employee of the Bureau of Internal Revenue to divulge any confidential information regarding the business, income or inheritance of any taxpayer, knowledge of which was acquired by him in the discharge of his official duties, and which it is unlawful for him to reveal, and any person who publishes or prints in any manner whatever, not provided by law, any income, profit, loss or expenditure appearing in any income tax return, shall be punished by a fine of not more than two thousand pesos (P2,000), or suffer imprisonment of not less than six (6) months nor more than five (5) years, or both o Republic Act No. 6969, Toxic Substances and Hazardous and Nuclear Wastes Control Act of 1990, limits the right of the public to have access to records, reports or information concerning chemical substances and mixtures including safety data submitted and data on emission or discharge into the environment, if the matter is confidential such that it would divulge trade secrets, production or sales figures; or methods, production or processes unique to such manufacturer, processor or distributor; or would otherwise tend to affect adversely the competitive position of such manufacturer, processor or distributor Jurisprudence: o intellectual and industrial property rights cases are not simple property cases all agreements concerning intellectual property are intimately connected with economic development and the protection of industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs It speeds up transfer of technology and industrialization, and thereby bring about social and economic progress o acknowledged the private character of trade secrets trade secrets and banking transactions are among the recognized restrictions to the right of the people to information as embodied in the Constitution trade secret is exempted from compulsory disclosure o In labor cases: protectionist stance towards the trade secrets of employers SC upheld the validity of the policy of a pharmaceutical company prohibiting its employees from marrying employees of any competitor company, on the rationalization that the company has a right to guard its trade secrets, manufacturing formulas, marketing strategies and other confidential programs and information from competitors Petitioner cannot rely on Section 77[43] of Republic Act 7394, Consumer Act of the Philippines, to compel respondent to reveal the chemical components of its products o GR: all consumer products domestically sold, whether manufactured locally or imported, shall indicate their general make or active ingredients in their respective labels of packaging o However, the law does not apply to respondent because respondents specialized lubricants are not consumer products Consumer products, as defined by said law refers to goods, services and credits, debts or obligations which are primarily for personal, family, household or agricultural purposes, which shall include, but not be limited to, food, drugs, cosmetics, and devices here, respondents products are not intended for personal, family, household or agricultural purposes but are for industrial use, specifically for the use of aircraft propellers and engines Moreover, petitioners argument that Republic Act No. 8203, or the Special Law on Counterfeit Drugs, requires the disclosure of the active ingredients of a drug is erroneous o Respondents products are outside the scope of the cited law since they are not drugs as defined by said law referring to any chemical compound or biological substance, other than food, that is intended for use in the treatment, prevention or diagnosis of disease in man or animals Findings of RTC and CA show that the chemical formulation of respondents products is not known to the general public and is unique only to it o Factual findings of the trial court when affirmed by the Court of Appeals, are binding and conclusive on the Supreme Court While the privilege is not absolute and the trial court may compel disclosure where it is indispensable for doing justice there is no showing why respondents trade secrets should be excepted from the rule on privilege o The revelation of respondents trade secrets serves no better purpose to the disposition of the main case pending with the RTC, which is on the collection of a sum of money since petitioner received respondents goods in trade in the normal course of business o Trade secrets should receive greater protection from discovery, because they derive economic value from being generally unknown and not readily ascertainable by the public and petitioner did not show a compelling reason to lift the veil of confidentiality which shields respondents trade secrets Dispositive: Petition is DENIED. The Decision dated 16 February 2006, and the Resolution dated 25 May 2006, of the Court of Appeals in CA-G.R. SP No. 86329 are AFFIRMED. No costs.
6. Elidad Kho v. Court of Appeals, G.R. No. 116758, March 19, 2002. - Kite Concept/Topic: Trademark Facts: Kho filed a complaint for injunction and damages with preliminary injunction against Summerville and Ang Tiam Chay Kho is doing business under KEC Cosmetics Lab, the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case. She has patent rights on Chin Chun Su & device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner in the Supplemental Register of the Phil. Patent Office. Summerville advertised and sold the same products under the name Chin Chun Su, in similar containers thereby misleading the public, and resulting in the decline of Khos business sales and income = copyright and patent infringement Summerville: exclusive and authorized importer, re- packer and distributor of Chin Chun Su products manufactured by Shun Yi Taiwan Trial Court granted preliminary injunction. CA reversed Trial court barred Kho from using the trademark Chin Chun Su but recognized the copyright over the oval shaped container of her beauty cream.
Issue: WON copyright and patent over the name and container of a beauty cream product would entitle the registrant to the use and ownership over the same to the exclusion of others? No
Ruling: Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another Trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. Trade name means the name or designation identifying or distinguishing an enterprise Scope of copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable inventions any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable Kho has no right to support her claim for the exclusive use of the subject trade name and its container The name and container of a beauty cream product are proper subjects of a trademark. To be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. Khos copyright and patent registration of the name and container would not guarantee her the right to the exclusive use of the same for the reason that they are not appropriate subjects of said intellectual rights. Preliminary injunction cannot be issued. Kho has not proven that she has registered a trademark thereto or used the same before anyone did. R58.1, Revised Rules of Civ Pro: elements for issuance of a writ of preliminary injunction o Proof that the applicant is entitled to the relief demanded o The whole or part of such relief consists in restraining the commission or continuance of the act or acts complained of, either for a limited period or perpetually
7. Berris Agricultural Co. v. Abyadang, G.R. 183404, October 13, 2010. - Michael Concept/Topic: Trademark, Prior use, Priority Date, Rights of Registered Trademark Holder, Confusion
Facts: Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. Berris Agricultural Co., Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of Opposition against the mark under application allegedly because "NS D-10 PLUS" is similar and/or confusingly similar to its registered trademark "D- 10 80 WP," also used for Fungicide (Class 5) with active ingredient 80% Mancozeb. Director Estrellita Beltran-Abelardo of the IPO-BLA decided in favor of Berris. However, Abyadang appealed to the CA which reversed the decision. Issues: 1. W/N Berris is a prior user with the rights of one. YES 2. W/N there exists confusing similarity between the marks. YES 3. W/N the cancellation of Petitioners duly registered and validly existing trademark in the absence of a properly filed Petition for Cancellation before the Intellectual Property Office is not in accord with the Intellectual Property Code and applicable Decisions of the Supreme Court. NO RULING Held: 1) Adoption of the mark alone does not suffice. One may make advertisements, issue circulars, distribute price lists on certain goods, but these alone will not inure to the claim of ownership of the mark until the goods bearing the mark are sold to the public in the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during a certain period of time. Berris presented the following evidence: (1) its trademark application dated November 29, 2002 with Application No. 4- 2002-0010272; (2) its IPO certificate of registration dated October 25, 2004 and July 8, 2004 as the date of registration; (3) a photocopy of its packaging bearing the mark "D-10 80 WP"; (4) photocopies of its sales invoices and official receipts; and (5) its notarized DAU dated April 23, 2003, stating that the mark was first used on June 20, 2002, and indicating that, as proof of actual use, copies of official receipts or sales invoices of goods using the mark were attached as Annex "B." Abyadangs proofs consisted of the following: (1) a photocopy of the packaging for his marketed fungicide bearing mark "NS D-10 PLUS"; (2) Abyadangs Affidavit dated February 14, 2006, stating among others that the mark "NS D-10 PLUS" was his own creation derived from: N for Norvy, his name; S for Soledad, his wifes name; D the first letter for December, his birth month; 10 for October, the 10th month of the year, the month of his business name registration; and PLUS to connote superior quality; that when he applied for registration, there was nobody applying for a mark similar to "NS D-10 PLUS" (3) Certification dated December 19, 2005 issued by the FPA, stating that "NS D-10 PLUS" is owned and distributed by NS Northern Organic Fertilizer, registered with the FPA since May 26, 2003, and had been in the market since July 30, 2003; Berris is the prior user of the mark. Berris was able to establish that it was using its mark "D-10 80 WP" since June 20, 2002, even before it filed for its registration with the IPO on November 29, 2002, as shown by its DAU which was under oath and notarized, bearing the stamp of the Bureau of Trademarks of the IPO on April 25, 2003, and the DAU, being a notarized document, especially when received in due course by the IPO, is evidence of the facts it stated and has the presumption of regularity, entitled to full faith and credit upon its face. The DAU is supported by the Certification dated April 21, 2006 issued by the Bureau of Trademarks that Berris mark is still valid and existing. 2) According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to: (1) the same goods or services; (2) closely related goods or services; or (3) near resemblance of such mark as to likely deceive or cause confusion. Comparing Berris mark "D-10 80 WP" with Abyadangs mark "NS D-10 PLUS," as appearing on their respective packages, one cannot but notice that both have a common component which is "D-10." On Berris package, the "D-10" is written with a bigger font than the "80 WP." Admittedly, the "D-10" is the dominant feature of the mark. The "D-10," being at the beginning of the mark, is what is most remembered of it. Although, it appears in Berris certificate of registration in the same font size as the "80 WP," its dominancy in the "D-10 80 WP" mark stands since the difference in the form does not alter its distinctive character. Dominancy Test: Abyadangs "NS D-10 PLUS" is similar to Berris "D-10 80 WP," that confusion or mistake is more likely to occur. Both pertain to fungicide with 80% Mancozeb and belong to the same classification of goods under R.A. No. 8293. Both depictions of "D-10," as found in both marks, are similar in size, such that this portion is what catches the eye of the purchaser. Holistic Test: The packaging is the same type of material (foil type) and have identical color schemes (red, green, and white); and the marks are both predominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath. 3) Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to Berris, and because the same should not have been cancelled by the CA, we consider it proper not to belabor anymore the issue of whether cancellation of a registered mark may be done absent a petition for cancellation.
8. Manzano v. Court of Appeals G.R. 113388, September 5, 1997 - Arianne TOPICS: patents, novelty, registration, patent office presumption of regularity FACTS: The petitioner filed an action for the cancellation of Letters of Patent covering a gas burner registered in the name of responded Melecia Madolaria who subsequently assigned the letter of patent to United Foundry. Petitioner alleged that the private respondent was not the original, true and actual inventor nor did she derive her rights from the original, true and actual inventor of the utility model covered by the letter of patent; further alleged that the utility model covered by the subject letter of patent had been known or used by others in the Philippines for than one (1) year before she filed her application for letter of patent on Dec 1979. For failure to present substantive proof of her allegations, the lower court and Court of Appeals denied the action for cancellation. ISSUE: Whether or not the respondent court wrongfully denied the cancellation of letter of patent registered under the private respondent. HELD: No. The issuance of such patent creates a presumption which yields only to clear and cogent evidence that the patentee was the original and first inventor. The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is met only by clear and satisfactory proof which overcomes every reasonable doubt. Clearly enough, the petitioner failed to present clear and satisfactory proof to overcome every reasonable doubt to afford the cancellation of the patent to the private respondent. ALSO: The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. This is a matter which is properly within the competence of the Patent Office the official action of which has the presumption of correctness and may not be interfered with in the absence of new evidence carrying thorough conviction that the Office has erred. The element of novelty is an essential requisite of the patentability of an invention or discovery. If a device or process has been known or used by others prior to its invention or discovery by the applicant, an application for a patent therefor should be denied; and if the application has been granted, the court, in a judicial proceeding in which the validity of the patent is drawn in question, will hold it void and ineffective. It has been repeatedly held that an invention must possess the essential elements of novelty, originality and precedence, and for the patentee to be entitled to the protection the invention must be new to the world. i.Rubber Tire Wheel Co. v. Goodyear Co., 232 U.S. 413 (1914) - Kester Topic: Patents, where the right to a patent attaches. Facts: The petitioners are the owners of the Grant Tire patent (No. 554,675) issued February 18, 1896, for an improvement in rubber-tired wheels. Circuit CA ruled that the patent was void for lack of novelty. Upon the basis of the decree entered upon that decision, the respondent instituted the present suit in the Southern District of Ohio to restrain the petitioners from prosecuting suits for infringement against the respondent's customers. SC however subsequently ruled that the patent of Rubber Tire Wheel was valid saying that the wheel had a tipping and reseating power. Rubber Tire Wheel then sued a man named Doherty who bought rubber from goodyear and made them into tires. Rubber Tire Wheel claims the Doherty violated its patent. Goodyear now wants to defend Doherty The Circuit Court granted the preliminary injunction Rubber Tire Wheel now appeals to the Supreme Court The Grant tire is composed of three elements: (1) a channel or groove with tapered or inclined sides, (2) a rubber tire with a described shape, adapted to fit into the channel, and (3) a fastening device consisting of independent retaining wires, which pass through the rubber tire and are placed in a particular position. Issue: WON Goodyears customers can buy the grant tire structure (not grant tire itself which is covered by the Rubber tire patent) and fashion them into tires? Held: No. Under the doctrine of Kessler v. Eldred, the respondent was entitled to make and sell the Grant structure, and to have those who bought that structure from it unmolested in taking title and in enjoying the rights of ownership. The respondent also had the right to make and sell its rubber without hindrance by the petitioners claiming under the patent. The trade right of the respondent, however, whether with respect to the complete structure or its separate parts, is merely the right to have that which it lawfully produces freely bought and sold without restraint or interference. It is a right which attaches to its product -- to a particular thing -- as an article of lawful commerce, and it continues only so long as the commodity to which the right applies retains its separate identity. If that commodity is combined with other things in the process of the manufacture of a new commodity, the trade right in the original part as an article of commerce is necessarily gone. So that, when other persons become manufacturers on their own behalf, assembling the various elements and uniting them so as to produce the patented device -- a new article -- it is manifest that the respondent cannot insist upon their being protected from suit for infringement by reason merely of its right to make and sell, and the fact of its having made and sold, some component part of that article. It must be able to go beyond a mere trade right in that element, and to show itself to be entitled to have its customers manufacture the patented structure. Thus, the fallacy in the respondent's contention becomes apparent. The decree gave the respondent no right to have others make Grant tires. It could make and sell them, and it could make and sell rubber; it could demand protection for its trade rights in the commodities it produced. But it had no transferable immunity in manufacture. The decree gave it no privilege to demand that others should be allowed to make and sell the patented structure in order that it might have a market for its rubber. The suit against Doherty was based upon his conduct in constructing Grant tires. The fact that the respondent could not be charged with liability as a participant in the infringement thus alleged did not excuse him, and the petitioners, in bringing the suit, did not violate any right of the respondent. 9. Gorham V. Company V. White, 81 U. S. 511 (1871) - Mars Gorham vs. White (1871) Topic: Design Patent Facts: In July1861, Gorham & Co., obtained a patent for a new design for the handles of tablespoons and forks, which under the name of the "cottage pattern" became extremely popular -- the most successful plain pattern, indeed, that had been in the market for many years. Gorham & Co. subsequently transferred their patent to the Gorham Manufacturing Company. In 1867, one White obtained a patent for a design which he alleged to be original with him for the same things -- the handles, namely, of forks and spoons -- and in 1868 a patent for still another design. Gorham Manufacturing Company accordingly filed a bill in the district court to enjoin White from making and selling spoons and forks under either of his patents. Witnesses for Gorham (manufacturer of silverware, merchant jewelers and designers from Tiffany and Co.): The essential features are the same; seven out of ten customers who buy silverware would consider them the same; that manufacturers as well as customers would consider them the same; that the trade generally would so consider them; that, though there are differences, they would not be noticed without a critical examination; that they are one and the same pattern. The White designs were intended to imitate the other, and they are so nearly identical that ordinary purchasers of silverware would mistake one for the other. Testimony of Mr. Henry B. Renwick, who during the last sixteen or seventeen years had frequently been examined as expert in the court: [this testimony contains descriptions of the objects involved] o White's patent of 1868 has increased concavity of outline in the broad part or head of the handle.The contours of the Gorham's articles and the articles manufactured by the White are not only substantially but almost identically the same. o The Gorham articles and the articles manufactured by White all have a threaded or reeded pattern round the edges, all have a slight knob or boss at the point where there are small shoulders marking the dividing line between the stem and head of the handle, and all have knobbed ornaments near the extreme end of the handle and adjacent to the pointed projection which, in all of them, forms that end. o Minor differences:1) The Gorham spoon has two threads along the shank where Whites have only one, but that one is of nearly equal width with the two and gives the same effect. 2) In the Gorham, the knobbed ornament at the shoulders is connected with the outer thread, while in White's it is connected with the inner thread; but these knobbed ornaments in both are in the same place and have the same general effect. 3) In the Gorham spoons, the knobbed ornaments on the inner reed are at the head of the spoon turned upwards and outwards. In White's, they are turned downwards and inwards, and the reed is flattened out, but the substantial shape or contour at the end of the spoon, and the ornamentation thereof, by raised ornaments, partly connected and partly unconnected with the threading, is substantially the same in both. Witnesses for White (jewelers, engravers, persons engaged in the inspection of designs): The designs wer substantially different, both in shape and design. Testimony of Mr. Edward S. Renwick, an expert, for White: In the Gorham design the stem of the handle, between the shoulders and the bowl, has a second thread upon it, which is parallel with and inside of the boundary thread. No such second thread is found in White's. There are fifteen mechanical differences between the Gorham design and White's, patented in 1867, and sixteen differences between the Gorham design and that of White patented in 1868. DC: No infringement. [see original for DC decision because it was very detailed on the comparison of the features of the two designs] The test of a patent for a design is not the eye of an ordinary observer. There could be no infringement unless there was "substantial identity" "in view of the observation of a person versed in designs in the particular trade in question -- of a person engaged in the manufacture or sale of articles containing such designs -- of a person accustomed to compare such designs one with another, and who sees and examines the articles containing them side by side. Issue: Whether there was substantial identity of designs (Yes) The acts of Congress which authorize the grant of patents for designs (e.g. Patent Act) were plainly intended to give encouragement to the decorative arts. They contemplate not so much utility as appearance, and that not an abstract impression or picture but an aspect given to those objects mentioned in the acts. The thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture or article to which it may be applied or to which it gives form. The law manifestly contemplates that giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. The appearance may be the result of peculiarity of configuration, or of ornament alone, or of both conjointly, but in whatever way produced, it is the new thing or product which the patent law regards. To speak of the invention as a combination or process or to treat it as such is to overlook its peculiarities. Patents for designs applied or to be applied refer to finished products of invention rather than to the process of finishing them or to the agencies by which they are developed. A patent for a product is a distinct thing from a patent for the elements entering into it, or for the ingredients of which it is composed, or for the combination that causes it. The controlling consideration in determining whether two designs are substantially the same is the resultant effect. It is the effect upon the eye which adds value to articles of trade or commerce. Test of Substantial Identity of Design: Sameness of Effect upon the Eye Plainly it must be sameness of appearance, and mere difference of lines in the drawing or sketch, a greater or smaller number of lines, or slight variances in configuration, if sufficient to change the effect upon the eye, will not destroy the substantial identity. An engraving which has many lines may present to the eye the same picture, and to the mind the same idea or conception as another with much fewer lines. The design, however, would be the same. Sameness of Effect upon the Eye of the Expert is NOT Essential Such a test would destroy all the protection which the act of Congress intended to give. There never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another -- so like that an expert could not distinguish them. Experts, therefore, are not the persons to be deceived. It is persons of the latter class who are the principal purchasers of the articles to which designs have given novel appearances, and if they are misled and induced to purchase what is not the article they supposed it to be -- if, for example, they are led to purchase forks or spoons, deceived by an apparent resemblance into the belief that they bear the "cottage" design, and therefore, are the production of the holders of the Gorham, Thurber, and Dexter patent, when in fact they are not -- the patentees are injured and that advantage of a market which the patent was granted to secure is destroyed. The purpose of the law cannot be effected if, while the general appearance of the design is preserved, minor differences of detail in the manner in which the appearance is produced, observable by experts but not noticed by ordinary observers, by those who buy and use, are sufficient to relieve an imitating design from condemnation as an infringement. If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. As applied in this case: The Gorham design, and the two designs sold by the defendant, which were patented to White, one in 1867, and the other in 1868, are alike in the result of peculiarities of outline, or configuration, and of ornamentation. These make up whatever is distinctive in appearance, and of these the outline or configuration is most impressive to the eye. Comparing the figure or outline of the plaintiffs' design with that of the White design of 1867, it is apparent there is no substantial difference. Even the minor differences are so minute as to escape observation unless observation is stimulated by a suspicion that there may be diversity. o Degree of Concavity: At the upper part of the handle, immediately above the point where the broader part widens from the stem with a rounded shoulder, while the external lines of both designs are first concave and then gradually become convex, the degree of concavity is greater in the White design. How much effect this variance has must be determined by the evidence. o Ornament: In all the designs, the ornament is, in part, a rounded molding or bead along the edge with scrolls at the shoulders and near the top. There are, however, some diversities in this ornament which are discoverable when attention is called to them. o 1. In the plaintiffs' the bead is interrupted at the shoulders and at the tip by the scrolls, while in both the designs of White it is continued unbroken around the scrolls. o 2. In the plaintiffs' the scrolls turn inward at the shoulders and outward at the tip. In the White design they turn inward both at the shoulders and at the upper end. o But there are the same number of scrolls in all the designs, and they are similarly located, all having the appearance of rosettes. o In all the external bead is formed by a depressed line running near the edge of the handle, but in the plaintiffs' there is an inner line, making a second very thin bead, nearly parallel to the external bead common to them all. o In the White designs this inner line is wanting on the stem of the handle, though not on the broad part, but as the single line is wider, it presents much the same appearance as it would present if divided into two. No doubt to the eye of an expert these minor differences are all real. Still, though variances in the ornament are discoverable, the question remains is the effect of the whole design substantially the same? A large number of witnesses, familiar with designs, and most of them engaged in the trade, testify that in their opinion there is no substantial difference in the three designs and that ordinary purchasers would be likely to mistake the White designs for the "cottage" (viz., that of the plaintiffs). As for defendants witnessnes, a large number of witnesses have testified on behalf of the defendant that the designs are substantially unlike, but when they attempt to define the dissimilarity, they specify only the minor differences in the ornamentation of which we have heretofore spoken. Their idea of what constitutes identity of design seems to be that it is the possibility of being struck from the same die, which, of course, cannot be if there exists the slightest variation in a single line. They give little importance to configuration, and none to general aspect. Such evidence is not an answer to the complainants' case. Whatever differences there may be between the plaintiffs' design and those of the defendant in details of ornament, they are still the same in general appearance and effect, so much alike that in the market and with purchasers they would pass for the same thing -- so much alike that even persons in the trade would be in danger of being deceived.
10. Ching v. Salinas G.R. 161295, June 29, 2005. supra i. Feist Pubs., Inc. V. Rural Tel. SVC. Co., INC., 499 U. S. 340 (1991) - Andrew Facts are not entitled to copyright FEIST PUBLICATIONS, INC. v. RURAL TEL. SERVICE CO Facts: Respondent Rural Telephone Service Company is a certified public utility providing telephone service to several communities in Kansas. Pursuant to state regulation, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. It obtains data for the directory from subscribers, who must provide their names and addresses to obtain telephone service. Petitioner Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories covering a much larger geographic range than directories such as Rural's. When Rural refused to license its white pages listings to Feist for a directory covering 11 different telephone service areas, Feist extracted the listings it needed from Rural's directory without Rural's consent. Although Feist altered many of Rural's listings, several were identical to listings in Rural's white pages. The District Court granted summary judgment to Rural in its copyright infringement suit, holding that telephone directories are copyrightable. The Court of Appeals affirmed. Issue: Whether Rural is entitled to a copyright over its telephone directory (No) Held: Rural's white pages are not entitled to copyright, and therefore Feist's use of them does not constitute infringement. The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity Article I, 8, cl. 8, of the Constitution mandates originality as a prerequisite for copyright protection. The constitutional requirement necessitates independent creation plus a modicum of creativity. Since facts do not owe their origin to an act of authorship, they are not original, and thus are not copyrightable. Although a compilation of facts may possess the requisite originality because the author typically chooses which facts to include, in what order to place them, and how to arrange the data so that readers may use them effectively, copyright protection extends only to those components of the work that are original to the author, not to the facts themselves. This fact/expression dichotomy severely limits the scope of protection in fact-based works. The Copyright Act of 1976 and its predecessor, the Copyright Act of 1909, leave no doubt that originality is the touchstone of copyright protection in directories and other fact-based works. The 1976 Act explains that copyright extends to "original works of authorship," and that there can be no copyright in facts, A compilation is not copyrightable per se, but is copyrightable only if its facts have been "selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." Thus, the statute envisions that some ways of selecting, coordinating, and arranging data are not sufficiently original to trigger copyright protection. Even a compilation that is copyrightable receives only limited protection, for the copyright does not extend to facts contained in the compilation. The Lower courts which adopted a "sweat of the brow" or "industrious collection" test - which extended a compilation's copyright protection beyond selection and arrangement to the facts themselves - misunderstood the 1909 Act and eschewed the fundamental axiom of copyright law that no one may copyright facts or ideas. In this case, there is no doubt that Feist took from the white pages of Rural's directory a substantial amount of factual information. Not all copying, however, is copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. The first element is not at issue; Feist appears to concede that Rural's directory, considered as a whole, is subject to a valid copyright because it contains some foreword text, as well as original material in its yellow pages advertisements. The question is whether Rural has proved the second element. In other words, did Feist, by taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy anything that was "original" to Rural? The raw data does not satisfy the originality requirement. Rural may have been the first to discover and report the names, towns, and telephone numbers of its subscribers, but this data does not "`owe its origin'" to Rural. Rather, these bits of information are uncopyrightable facts; they existed before Rural reported them, and would have continued to exist if Rural had never published a telephone directory. The originality requirement rules out protecting names, addresses, and telephone numbers of which the plaintiff, by no stretch of the imagination, could be called the author." Rural's white pages do not meet the constitutional or statutory requirements for copyright protection. While Rural has a valid copyright in the directory as a whole because it contains some forward text and some original material in the yellow pages, there is nothing original in Rural's white pages. The raw data are uncopyrightable facts, and the way in which Rural selected, coordinated, and arranged those facts is not original in any way. Rural's selection of listings - subscribers' names, towns, and telephone numbers - could not be more obvious, and lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. In fact, it is plausible to conclude that Rural did not truly "select" to publish its subscribers' names and telephone numbers, since it was required to do so by state law. Moreover, there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course.
10. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)-Miggy Concept/Topic: Trademark Infringement, Factors of Likelihood o Facts: This is a trademark infringement case filed by AMF (Slickcraft) against Sleekcraft Boats. Trial court found that AMFs trademark was valid, but not infringed, and denied AMFs request for injunctive relief. AMF's predecessor used the name Slickcraft Boat Company from 1954 to 1969 when it became a division of AMF. The mark Slickcraft was federally registered on April 1, 1969, and has been continuously used since then as a trademark for this line of recreational boats. After several years in the boat-building business, appellee Nescher organized a sole proprietorship, Nescher Boats, in 1962. This venture failed in 1967. In late 1968 Nescher began anew and adopted the name Sleekcraft. Since then Sleekcraft has been the Nescher trademark. The name Sleekcraft was selected without knowledge of appellant's use. After AMF notified him of the alleged trademark infringement, Nescher adopted a distinctive logo and added the identifying phrase "Boats by Nescher" on plaques affixed to the boat and in much of its advertising. The Sleekcraft mark still appears alone on some of appellee's stationery, signs, trucks, and advertisements. Issue(s): 1. What is the standard of review? 2. Has a likelihood of confusion been demonstrated? 3. What relief is warranted? Ratio 1. RES: Nescher contends that "likelihood of confusion" is a question of fact reviewable under the clearly erroneous standard. PET: AMF says it is a question of law reviewable De novo. Court: To the extent that the conclusion of the trial court is based solely upon disputed findings of fact, the appellate court must follow the conclusion of the trial court unless it finds the underlying facts to be clearly erroneous. However, if the facts are not in dispute, the appellate court is 'in as good a position as the trial judge to determine the probability of confusion. 2. In determining whether confusion between related goods is likely, the following factors are relevant: [FN11] 1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant's intent in selecting the mark; and 8. likelihood of expansion of the product lines. Strength of the Mark Court discusses several levels of strength. Distinctive: Arbitrary or fanciful mark, afforded widest ambit of protection form infringing use. Suggestive: Subtly connote something about the products, although less distinctive that a fanciful or arbitrary mark and therefore a comparatively weak mark, protected without proof of second meaning. Descriptive: Tells something about a product, protected only when second meaning is shown. (BBQ, Hot&Crispy) Although the distinction between descriptive and suggestive marks may be inarticulable, the primary criterion is "the imaginativeness involved in the suggestion. Court found that it was a suggestive mark, which although protectible and may have been strengthened by advertising, it is a weak mark entitled to a restricted range of protection. Thus, only if the marks are quite similar, and the goods closely related, will infringement be found. Proximity - Although these product lines are non-competing, they are extremely close in use and function. In fact, their uses overlap. Both are for recreational boating on bays and lakes. Both are designed for water skiing and speedy cruises. Their functional features, for the most part, are also similar: fiberglass bodies, outboard motors, and open seating for a handful of people. Although the Sleekcraft boat is for higher speed recreation and its refinements support the market distinction the district court made, they are so closely related that a diminished standard of similarity must be applied when comparing the two marks. Similarity of the Marks - Similarity of the marks is tested on three levels: sight, sound, and meaning. Standing alone the words Sleekcraft and Slickcraft are the same except for two inconspicuous letters in the middle of the first syllable. To the eye, the words are similar. Sound is also important because reputation is often conveyed word-of-mouth. We recognize that the two sounds can be distinguished, but the difference is only in a small part of one syllable. The final criterion reinforces our conclusion. Closeness in meaning can itself substantiate a claim of similarity of trademarks. Nescher contends the words are sharply different in meaning. This contention is not convincing; the words are virtual synonyms. Despite the trial court's findings, we hold that the marks are quite similar on all three levels. In support of the district court's finding, Nescher points out that the distinctive logo on his boats and brochures negates the similarity of the words. Nescher also points out that the Slickcraft name is usually accompanied by the additional trademark AMF. As a result of this consistent use, Nescher argues, AMF has become the salient part of the mark indicative of the product's origin. Court: the effect is negligible here even though AMF is a well-known house name for recreational equipment. The exhibits show that the AMF mark is down-played in the brochures and advertisements; the letters AMF are smaller and skewed to one side. Evidence of Actual Confusion Evidence that use of the two marks has already led to confusion is persuasive proof that future confusion is likely. A substantial showing of confusion among either group might have convinced the trial court that continued use would lead to further confusion. The district judge found that in light of the number of sales and the extent of the parties' advertising, the amount of past confusion was negligible. Because of the difficulty in garnering such evidence, the failure to prove instances of actual confusion is not dispositive. Marketing Channels - Convergent marketing channels increase the likelihood of confusion. The normal marketing channels used by both AMF and Nescher are, however, parallel. Each sells through authorized retail dealers in diverse localities. The same sales methods are employed. The price ranges are almost identical. Each line is advertised extensively though different national magazines are used; the retail dealers also promote the lines, by participating in smaller boat shows and by advertising in local newspapers and classified telephone directories. Although different submarkets are involved, the general class of boat purchasers exposed to the products overlap. Type of Goods and Purchaser care - In assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution. When the buyer has expertise in the field, a higher standard is proper though it will not preclude a finding that confusion is likely. Also when the goods are expensive, the buyer can be expected to exercise greater care in his purchases; again, though, confusion may still be likely. The district court also found that trademarks are unimportant to the average boat buyer. Common sense and the evidence indicate this is not the type of purchase made only on "general impressions." This inattention to trade symbols does reduce the possibilities for confusion. The hallmark of a trademark owner's interest in preventing use of his mark on related goods is the threat such use poses to the reputation of his own goods. When the alleged infringer's goods are of equal quality, there is little harm to the reputation earned by the trademarked goods. Yet this is no defense, for present quality is no assurance of continued quality. Intent - The district judge found that Nescher was unaware of appellant's use of the Slickcraft mark when he adopted the Sleekcraft name. There was no evidence that anyone attempted to palm off the latter boats for the former. And after notification of the purported infringement, Nescher designed a distinctive logo. Appellee's good faith cannot be questioned Likelihood of Expansion - The potential that one or both of the parties will enter the other's submarket with a competing model is strong. 3. Both parties have used their trademarks for over a decade. AMF has a substantial investment in the Slickcraft name, yet a complete prohibition against appellee's use of the Sleekcraft name is unnecessary to protect against encroachment of appellant's mark or to eliminate public confusion. Appellee has also expended much effort and money to build and preserve the goodwill of its mark. At minimum, the logo should appear in all advertisements, signs, and promotional materials prepared either by appellee or by his retail dealers, and on all appellee's business forms except those intended for strictly internal use. A specific disclaimer of any association with AMF or the Slickcraft line seems unnecessary, nor do we think it necessary to enjoin Nescher from expanding his product line. In its discretion the district judge may allow appellee sufficient time to consume supplies at hand and to add the logo to more permanent assets, such as business signs
11. Emerald Garment Manufacturing Corp. v. CA, G.R. 100098, December 29, 1995. Dinnah Mae TOPIC: Trademark H.D. Lee Co., Inc., a foreign corporation organized under the laws of Delaware, U.S.A., filed with BPTTT a Petition for Cancellation of a Supplemental Register for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation, a domestic corporation organized and existing under Philippine laws (Inter Partes Case No. 1558.) o They invoked Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris Convention for the Protection of Industrial Property, averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines, and not abandoned, as to be likely, when applied to or used in connection with petitioner's goods, to cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods."
Petitioner contended that its trademark was entirely and unmistakably different from that of private respondent and that its certificate of registration was legally and validly granted.
Petitioner later caused the publication of its application for registration of the trademark "STYLISTIC MR. LEE" in the Principal Register." o Private respondent filed a notice of opposition also on grounds that petitioner's trademark was confusingly similar to its "LEE" trademark. (Inter Partes Case No. 1860.) The Director of Patents issued an order consolidating Inter Partes Cases Nos. 1558 and 1860 on grounds that a common question of law was involved.
Director of Patents: rendered a decision granting private respondent's petition for cancellation and opposition to registration. Petitioner filed a Motion to Stay Execution with the BPTTT: granted CA: affirmed the decision of the Director of Patents MR: denied ISSUES: 1. WON respondent is barred by laches. NO 2. Won there is confusing similarity between the two trademarks. NO RULING: 1. PETITIONER: private respondent is estopped from instituting an action for infringement before the BPTTT under the equitable principle of laches pursuant to Sec. 9-A of R.A. No. 166, otherwise known as the Law on Trade-marks, Trade-names and Unfair Competition It has been using its trademark "STYLISTIC MR. LEE" since 1 May 1975, yet, it was only on 18 September 1981 that private respondent filed a petition for cancellation of petitioner's certificate of registration for the said trademark. private respondent's notice of opposition to petitioner's application for registration in the principal register was belatedly filed on 27 July 1984.
PRIVATE RESPONDENT: petitioner was barred from raising new issues on appeal, the only contention in the proceedings below being the presence or absence of confusing similarity between the two trademarks in question.
COURT: rejects petitioners contention Petitioner's trademark is registered in the supplemental register. The Trademark Law (R.A. No. 166) provides that "marks and tradenames for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette."
The reckoning point, should not be 1 May 1975 (date of alleged use by petitioner of its assailed trademark) but 27 October 1980,
the date the certificate of registration SR No. 5054 was published in the Official Gazette and issued to petitioner (when private respondent is considered "officially" put on notice that petitioner has appropriated or is using said mark) The record is bereft of evidence that private respondent was aware of petitioner's trademark before the date of said publication and issuance When private respondent instituted cancellation proceedings on 18 September 1981, less than a year had passed. RE: filing its notice of opposition to petitioner's application for registration in the principal register- The application was published only on 20 February 1984 and the opposition was filed on 27 July 1984 (barely 5 months had elapsed). 2. PETITIONER: vehemently contends that its trademark "STYLISTIC MR. LEE" is entirely different from and not confusingly similar to private respondent's "LEE" trademark. PRIVATE RESPONDENT: petitioner's trademark tends to mislead and confuse the public and thus constitutes an infringement of its own mark, since the dominant feature therein is the word "LEE." COURT: The pertinent provision is R.A. No. 166 (Trademark Law) a) NO COLORABLE IMITATION. In the history of trademark cases in the Philippines, particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another, no set rules can be deduced. Each case must be decided on its own merits. o Esso Standard Eastern, Inc. v. Court of Appeals: In determining whether a particular name or mark is a "colorable imitation" of another, no all-embracing rule seems possible in view of the great number of factors which must necessarily be considered in resolving this question of fact, such as the class of product or business to which the article belongs; the product's quality, quantity, or size, including its wrapper or container; the dominant color, style, size, form, meaning of letters, words, designs and emblems used; the nature of the package, wrapper or container; the character of the product's purchasers; location of the business; the likelihood of deception or the mark or name's tendency to confuse; etc. Colorable imitation has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other." o does not mean such similitude as amounts to identity. o refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. o TESTS: Dominancy Test (Asia Brewery, Inc. v. CA)- similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. Holistic Test (Del Monte Corporation v. CA) -the entirety of the marks in question must be considered in determining confusing similarity. taking into account the factual circumstances of this case, we considered the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private respondent's "LEE" trademark. Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE" is prominent, the dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. o the main, various kinds of jeans. They are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. o average Filipino consumer generally buys his jeans by brand. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted. o the Ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. Dy Buncio v. Tan Tiao Bok: the "ordinary purchaser" was defined as one "accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. b) RE: product might be mistaken as "another variation or line of garments under private respondent's 'LEE' trademark". - NO. One would readily observe, private respondent's variation follows a standard format "LEERIDERS," "LEESURES" and "LEELEENS." It is, therefore, improbable that the public would immediately and naturally conclude that petitioner's "STYLISTIC MR. LEE" is but another variation under private respondent's "LEE" mark. c) Another way of resolving the conflict is to consider the marks involved from the point of view of what marks are registrable pursuant to Sec. 4 of R.A. No. 166, particularly paragraph 4 (e) "LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of said term. . . . personal name or surname may not be monopolized as a trademark or tradename as against others of the same name or surname. For in the absence of contract, fraud, or estoppel, any man may use his name or surname in all legitimate ways d) FAILED TO PROVE PRIOR ACTUAL COMMERCIAL USE. Respondent failed to prove prior actual commercial use of its "LEE" trademark in the Philippines before filing its application for registration with the BPTTT and hence, has not acquired ownership over said mark. Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No. 166) The provisions of the 1965 Paris Convention for the Protection of Industrial Property relied upon by private respondent and Sec. 21-A of the Trademark Law (R.A. No. 166)
were sufficiently expounded upon and qualified in the recent case of Philip Morris, Inc. v. Court of Appeals Undisputably, private respondent is the senior registrant, having obtained several registration certificates for its various trademarks "LEE," "LEERIDERS," and "LEESURES" in both the supplemental and principal registers, as early as 1969 to 1973. 41
However, registration alone will not suffice. o Sterling Products International, Inc. v.Farbenfabriken Bayer Aktiengesellschaft: actual use in commerce or business is a prerequisite in the acquisition of the right of ownership over a trademark... Adoption is not use. One may make advertisements, issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of use...The underlying reason for all these is that purchasers have come to understand the mark as indicating the origin of the wares. Registration of a trademark, of course, has value: it is an administrative act declaratory of a pre- existing right. Registration does not, however, perfect a trademark right. (Emphasis ours.) To augment its arguments that it was, not only the prior registrant, but also the prior user, private respondent invokes Sec. 20 of the Trademark Law o A registration certificate serves merely as prima facie evidence. It is not conclusive but can and may be rebutted by controverting evidence. o Moreover, the provision applies only to registrations in the principal register.
Registrations in the supplemental register do not enjoy a similar privilege. A supplemental register was created precisely for the registration of marks which are not registrable on the principal register due to some defects.
The determination as to who is the prior user of the trademark is a question of fact. o In the case at bench, we reverse the findings of the Director of Patents and the Court of Appeals. o The Director of Patents and the Court of Appeals relied mainly on the registration certificates as proof of use by private respondent of the trademark "LEE" which, as we have previously discussed are not sufficient. o We cannot give credence to private respondent's claim that its "LEE" mark first reached the Philippines in the 1960's through local sales by the Post Exchanges of the U.S. Military Bases in the Philippines
based as it was solely on the self-serving statements of Mr. Edward Poste, General Manager of Lee (Phils.), Inc., a wholly owned subsidiary of the H.D. Lee, Co., Inc., U.S.A., herein private respondent. o On the other hand, petitioner has sufficiently shown that it has been in the business of selling jeans and other garments adopting its "STYLISTIC MR. LEE" trademark since 1975 as evidenced by appropriate sales invoices to various stores and retailers. (Pagasa Industrial Corp. v. Court of Appeals 51 and Converse Rubber Corp. v. Universal Rubber Products, Inc.): o The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no dispute that respondent corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject markThe evidence for respondent must be clear, definite and free from inconsistencies For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its own mark and for failure to establish confusing similarity between said trademarks, private respondent's action for infringement must necessarily fail. WHEREFORE, premises considered, the questioned decision and resolution are hereby REVERSED and SET ASIDE. --------- PADILLA, J., dissenting: I dissent. I vote deny the petition; I agree with BPTTT and the CA that petitioner's trademark "STYLISTIC MR. LEE" is confusingly similar to private respondent's earlier registered trademarks "LEE" or "LEE RIDER, LEE-LEENS and LEE-SURES" such that the trademark "STYLISTIC MR. LEE" is an infringement of the earlier registered trademarks.
12. Shangri-la International Hotel Management v. Developers Group of Companies, INC, G.R. 159938, March 31, 2006. - Jen Topic: actual use, prior use Facts: 1. At the core of the controversy are the Shangri-La mark and S logo. Respondent DGCI claims ownership of said mark and logo in the Philippines on the strength of its prior use thereof within the country. 2. October 18, 1982: DGCI filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) pursuant to Sections 2 and 4 of RA 166, as amended, an application for registration covering the subject mark and logo. 3. December 1982: DGCI came up with the design for their trademark and logo done by a jeepney signboard artist. 4. May 31, 1983: BPTTT issued in favor of DGCI the corresponding certificate of registration, i.e., Registration No. 31904. Since then, DGCI started using the Shangri-La mark and S logo in its restaurant business. 5. On the other hand, the Kuok family owns and operates a chain of hotels with interest in hotels and hotel-related transactions since 1969. As far back as 1962, it adopted the name Shangri-La as part of the corporate names of all companies organized under the aegis of the Kuok Group of Companies (the Kuok Group). The Kuok Group has used the name Shangri-La in all Shangri-La hotels and hotel-related establishments around the world which the Kuok Family owned. 6. To centralize operations, Kuok Group incorporated in Hong Kong and Singapore, among other places, several companies that form part of the Shangri-La International Hotel Management Ltd. Group of Companies. EDSA Shangri-La Hotel and Resort, Inc., and Makati Shangri-La Hotel and Resort, Inc. were incorporated in the Philippines beginning 1987 to own and operate the two hotels put up by the Kuok Group in Mandaluyong and Makati, Metro Manila. 7. All hotels owned, operated and managed by the aforesaid SLIHM Group of Companies adopted and used the distinctive lettering of the nameShangri-La as part of their trade names. 8. Kuok Group commissioned a Singaporean designer for their logo. This logo has been used by the hotel chain since 1975 in all their paraphernalia such as stationeries, envelopes, menus, receipts, etc. The Kuok Group and/or petitioner SLIHM also caused the registration of, and in fact registered, the Shangri-La mark and S logo in the patent offices in different countries around the world. 9. Petitioners filed with the BPTTT a petition, docketed as Inter Partes Case No. 3145, praying for the cancellation of the registration of the Shangri-La mark and S logo issued to respondent DGCI on the ground that the same were illegally and fraudulently obtained and appropriated for the latter's restaurant business. They also filed in the same office Inter Partes Case No. 3529, praying for the registration of the same mark and logo in their own names. 10. While trial was in progress, the petitioners filed with the court a motion to suspend proceedings on account of the pendency before the BPTTT of Inter Partes Case No. 3145 for the cancellation of DGCIs certificate of registration. For its part, respondent DGCI filed a similar motion in that case, invoking in this respect the pendency of its infringement case before the trial court. 11. The two cases were eventually consolidated. On June 21, 2001, the Court, limiting itself to the core issue of whether, despite the petitioners institution of Inter Partes Case No. 3145 before the BPTTT, herein respondent DGCI can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark, ruled in the affirmative, but nonetheless ordered the BPTTT to suspend further proceedings in said inter partes case and to await the final outcome of the main case. Petitioner: (1) Respondent had no right to file an application for registration of the Shangri-La mark and S logo because it did not have prior actual commercial use thereof. Although petitioners did not operate any establishment in the Philippines until 1987 or 1988, they advertised their hotels abroad since 1972 in numerous business, news, and/or travel magazines widely circulated around the world, all readily available in Philippine magazines and newsstands. They, too, maintained reservations and booking agents in airline companies, hotel organizations, tour operators, tour promotion organizations, and in other allied fields in the Philippines. (2) Respondent's use of the Shangri-La mark and S logo was in evident bad faith and cannot therefore ripen into ownership, much less registration. Private respondent: (1) such an argument raises a question of fact that was already resolved by the RTC and concurred in by the CA (2) DGCI has, for the last eight years, been the prior exclusive user in the Philippines of the mark and logo in question and the registered owner thereof for its restaurant and allied services. (3) Since the petitioners adopted the Shangri-La mark and S logo as a mere corporate name or as the name of their hotels, instead of using them as a trademark or service mark, then such name and logo are not trademarks. The two concepts of corporate name or business name and trademark or service mark, are not mutually exclusive Issue: W/N registration of a mark is sufficient to establish prior actual use by the registrant (NO) W/N respondent is guilty of bad faith (YES) Held: 1. First off, all that the RTC found was that respondent was the prior user and registrant of the subject mark and logo in the Philippines. Taken in proper context, the trial courts finding on prior use can only be interpreted to mean that respondent used the subject mark and logo in the country before the petitioners did. It cannot be construed as being a factual finding that there was prior use of the mark and logo before registration. Moreover, the question is not merely factual in nature because the question is not whether there had been widespread prior use, which would have been factual, but whether that prior use entitles the petitioners to use the mark and logo in the Philippines. This is clearly a question which is legal in nature. 2. While the present law on trademarks has dispensed with the requirement of prior actual use at the time of registration, the law in force at the time of registration must be applied. Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption and use in trade or commerce. As between actual use of a mark without registration, and registration of the mark without actual use thereof, the former prevails over the latter. For a rule widely accepted and firmly entrenched, because it has come down through the years, is that actual use in commerce or business is a pre-requisite to the acquisition of the right of ownership. Registration, without more, does not confer upon the registrant an absolute right to the registered mark. The certificate of registration is merely a prima facie proof that the registrant is the owner of the registered mark or trade name. Evidence of prior and continuous use of the mark or trade name by another can overcome the presumptive ownership of the registrant and may very well entitle the former to be declared owner in an appropriate case. Here, respondent's own witness, Ramon Syhunliong, testified that a jeepney signboard artist allegedly commissioned to create the mark and logo submitted his designs only in December 1982. This was two-and-a-half months after the filing of the respondents trademark application on October 18, 1982 with the BPTTT. It was also only in December 1982 when the respondent's restaurant was opened for business. Respondent cannot now claim before the Court that the certificate of registration itself is proof that the two- month prior use requirement was complied with, what with the fact that its very own witness testified otherwise in the trial court. And because at the time (October 18, 1982) the respondent filed its application for trademark registration of the Shangri-La mark and S logo, respondent was not using these in the Philippines commercially, the registration is void. 3. Section 2 of RA 166, the governing law at that time, requires actual use for two months in determining what are registrable marks. Section 2-A likewise emphasizes that in acquiring ownership over marks, actual use of a mark not appropriated by another (not limited to Philippines) is necessary. It is not the fact of registration that enables one to acquire ownership over the mark but the fact of actual use thereof. Under Section 2, in order to register a trademark, one must be the owner thereof and must have actually used the mark in commerce in the Philippines for 2 months prior to the application for registration. Since ownership of the trademark is required for registration, Section 2-A of the same law sets out to define how one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is significant to note that Section 2-A does not require that the actual use of a trademark must be within the Philippines. Hence, under R.A. No. 166, as amended, one may be an owner of a mark due to actual use thereof but not yet have the right to register such ownership here due to failure to use it within the Philippines for two months. In the case of DGCI, not only was its trademark not actually used prior to registration, the mark had already been appropriated by someone else. Again, Section 2-A of RA 166 does not qualify that such appropriation by another be limited to the Philippines. 4. The new Intellectual Property Code (IPC), Republic Act No. 8293, undoubtedly shows the firm resolve of the Philippines to observe and follow the Paris Convention by incorporating the relevant portions of the Convention such that persons who may question a mark (that is, oppose registration, petition for the cancellation thereof, sue for unfair competition) include persons whose internationally well- known mark, whether or not registered, is identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or is actually registered. However, while the Philippines was already a signatory to the Paris Convention, the IPC only took effect on January 1, 1988, and in the absence of a retroactivity clause, R.A. No. 166 still applies. Thus, petitioners cannot use the Paris Convention to bolster their claim. Nevertheless, with the double infirmity of lack of two-month prior use, as well as bad faith in the respondent's registration of the mark, it is evident that the petitioners cannot be guilty of infringement. 5. Nor can the petitioners' separate personalities from their mother corporation be an obstacle in the enforcement of their rights as part of the Kuok Group of Companies and as official repository, manager and operator of the subject mark and logo. Besides, R.A. No. 166 did not require the party seeking relief to be the owner of the mark but any person who believes that he is or will be damaged by the registration of a mark or trade name.
13. Sehwani, Inc. v. In-N-Out Burger, Inc., G.R. 171053, October 15, 2007 - Kristina Title: Sehwani, Inc. vs. In-N-Out Burger, Inc.
Concept/Topic: Paris Convention; cancellation of registration; internationally famous marks; trademark infringement; protection of internationally famous marks
Facts Petitioner = Sehwani, Inc; alleged infringer Respondent = IN-N-OUT Burger, Inc., a foreign corporation organized under the laws of California, U.S.A., and not doing business in the Philippines; rights holder June 2, 1997: Respondent applied with the IPO for the registration of its trademark IN-N-OUT Burger & Arrow Design and servicemark IN-N-OUT. In the course of its application, it discovered that petitioner had obtained Trademark Registration No. 56666 for the mark IN N OUT (THE INSIDE OF THE LETTER O FORMED LIKE A STAR) on December 17, 1993 without its authority. Respondent demanded that petitioner desist from claiming ownership of the mark IN-N-OUT and to voluntarily cancel its trademark registration but petitioner refused to accede to the demand and even entered into a licensing agreement with Benitas Frites, Inc. Respondent filed a complaint for violation of intellectual property rights before BLA-IPO In its answer, petitioner alleged the following: o Respondent lack the legal capacity to sue because it was not doing business in the Philippines and that it has no cause of action because its mark is not registered or used in the Philippines o As the registered owner of the IN-N-OUT mark, it enjoys the presumption that the same was validly acquired and that it has the exclusive right to use the mark o Respondent failed to show the existence of any of the grounds for cancellation thereof under Section 151 of IP Code BLA-IPO cancelled petitioners trademark registration but held that it was not guilty of unfair competition Office of the Director General dismissed petitioners appeal for being filed out of time The CA dismissed petitioners petition for lack of merit Respondent filed a manifestation with the CA that on December 23, 2005, the Director General had rendered a decision in appeal finding petitioners guilty of unfair competition Petitioner filed petition for review before the SC Issue: WON Sehwani is guilty of trademark infringement? YES Held: Petition DENIED. Ratio: Respondent has the legal capacity to sue for the protection of its trademarks, albeit it is not doing business in the Philippines. Basis = Section 160 in relation to Section 3 of IP Code Articles 6bis and 8 of the Paris Convention, wherein both the United States and the Philippines are signatories, provides protection for well-known trademarks BLA-IPO through Director Beltran-Abelardo held that respondent is an owner of an internationally well-known mark based on evidence consisting of: o worldwide registration of mark IN-N-OUT almost all of which were issued earlier than the petitioners date of filing of its application o subsequent registration of the mark IN-N-OUT in the IPO o advertisements made by respondent for In-N-Out Burger The fact that respondents marks are neither registered nor used in the Philippines is of no moment. The scope of protection initially afforded by Article 6bis of the Paris Convention has been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, wherein the World Intellectual Property Organization (WIPO) General Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known mark should be protected in a country even if the mark is neither registered nor used in that country. Petitioners claim that no ground exists for the cancellation of their registration lacks merit. Basis = Section 151(b) of the IP Code o The evidence on record shows that not only did the petitioners use the IN-N-OUT Burger trademark for the name of their restaurant, but they also used identical or confusingly similar mark for their hamburger wrappers and french-fries receptacles, thereby effectively misrepresenting the source of the goods and services Petitioners contention that respondent is precluded from asserting its claim by laches, if not by prescription, lacks basis. o Section 151(b) of the IP Code specifically provides that a petition to cancel the registration of a mark which is registered contrary to the provisions thereof, or which is used to misrepresent the source of the goods or services, may be filed at any time. o Laches may not prevail against a specific provision of law, since equity is applied in the absence of and not against statutory law or rules of procedure.
14. Etepha, A.G. v. Director of Patents and Westmont Pharmaceuticals Inc., G.R. No. L-20635, November 19, 1966. - Poy Facts: Respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used exclusively in the Philippines since January 21, 1959.
Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claims that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued on September 25, 1957) used on a preparation for the treatment of coughs, that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.
The Director of Patents ruled that the trademark ATUSSIN may be registered even though PERTUSSIN had been previously registered from the same office, hence, this appeal.
ISSUE: Whether or not ATUSSIN may be registered? YES
We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. The phrase "colorable imitation" denotes such a "close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.
A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. Confusion is likely between trademarks, however, only if their over-all presentations in any of the particulars of sound, appearance, or meaning are such as would lead the purchasing public into believing that the products to which the marks are applied emanated from the same source.
We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription.When this happens, then the buyer must be one thoroughly familiar with what he intends to get, else he would not have the temerity to ask for a medicine specifically needed to cure a given ailment. In which case, the more improbable it will be to palm off one for the other. For a person who purchases with open eyes is hardly the man to be deceived.
For the reasons given, the appealed decision of the respondent Director of Patents giving due course to the application for the registration of trademark ATTUSIN is hereby affirmed. Cost against petitioner.So ordered.
15. Converse Rubber Corporation v. Universal Rubber Products Inc., G.R. No. L-27906, January 18, 1987. - Dane CONVERSE RUBBER vs.UNIVERSAL RUBBER (January 8, 1987, FERNAN) Topic: How to go about protecting your IP -Trademark (Similar Marks, cancellation of registration, confusion) FACTS: Respondent Universal Rubber filed an application with the Philippine Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers Petitioner Converse Rubber filed its opposition to the application for registration on grounds that: o The trademark sought to be registered is confusingly similar to the word "CONVERSE" which is part of petitioner's corporate name "CONVERSE RUBBER CORPORATION" as to likely deceive purchasers of products on which it is to be used to an extent that said products may be mistaken by the unwary public to be manufactured by the petitioner; and, o The registration of respondent's trademark will cause great and irreparable injury to the business reputation and goodwill of petitioner in the Philippines and would cause damage to said petitioner within the, meaning of Section 8, R.A. No. 166, as amended Respondent filed its answer and at the pre-trial o Partial stipulation of facts: The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and has been in existence since July 31, 1946; it is duly organized under the laws of Massachusetts, USA and doing business at 392 Pearl St., Malden, County of Middle sex, Massachusetts; Petitioner is not licensed to do business in the Philippines and it is not doing business on its own in the Philippines; and, Petitioner manufacturers rubber shoes and uses thereon the trademarks "CHUCK TAYLOR "and "ALL STAR AND DEVICE" At the trial, petitioner's lone witness, Mrs. Pacquing, a duly licensed private merchant with stores at the Sta. Mesa Market and in Davao City, testified that o she had been selling CONVERSE rubber shoes in the local market since 1956 and that sales of petitioner's rubber shoes in her stores averaged twelve to twenty pairs a month purchased mostly by basketball players of local private educational institutions like Ateneo, La Salle and San Beda o she knew petitioner's rubber shoes came from the United States "because it says there in the trademark Converse Chuck Taylor with star red or blue and is a round figure and made in U.S.A. " In the invoices issued by her store, the rubber shoes were described as "Converse Chuck Taylor", "Converse All Star," "All Star Converse Chuck Taylor," or "Converse Shoes Chuck Taylor." o she had no business connection with the petitioner. Respondents lone witness is secretary of said corporation who testified that o respondent has been selling on wholesale basis "Universal Converse" sandals since 1962 and "Universal Converse" rubber shoes since 1963. Invoices were submitted as evidence of such sales o she had no Idea why respondent chose "Universal Converse" as a trademark and that she was unaware of the name "Converse" prior to her corporation's sale of "Universal Converse" rubber shoes and rubber sandals Director of Patents: dismissed the opposition of the petitioner and gave due course to respondent's application REASONING that o there is nothing that will prevent registration of the word 'UNIVERSAL CONVERSE' in favor of the respondent given that the oppose-petitioner failed to present proof that the single word "CONVERSE' in its corporate name has become so Identified with the corporation that whenever used, it designates to the mind of the public that particular corporation o sales made by a single witness who had never dealt with the petitioner . . . the entry of Opposer's [petitioner's] goods in the Philippines were not only effected in a very insignificant quantity but without the opposer [petitioner] having a direct or indirect hand in the transaction so as to be made the basis for trademark pre- exemption o Opposer's [petitioner] proof of its corporate personality cannot establish the use of the word "CONVERSE" in any sense, as it is already stipulated that it is not licensed to do business in the Philippines, and is not doing business of its own in the Philippines o also stipulated that opposer [petitioner], in manufacturing rubber shoes uses thereon the trademark "CHUCK TAYLOR" and "ALL STAR and DEVICE" and none other MR denied; petitioner filed petition for review ISSUE: whether or not the respondent's partial appropriation of petitioner's corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the petitioner to which the name belongs RULING: A trade name is any individual name or surname, firm name, device or word used by manufacturers, industrialists, merchants and others to identify their businesses, vocations or occupations. It refers to the business and its goodwill while trademark refers to the goods o The ownership of a trademark or tradename is a property right which the owner is entitled to protect "since there is damage to him from confusion or reputation or goodwill in the mind of the public as well as from confusion of goods o The modern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as fraud From a cursory appreciation of the petitioner's corporate name "CONVERSE RUBBER CORPORATION,' it is evident that the word "CONVERSE" is the dominant word which Identifies petitioner from other corporations engaged in similar business o Respondent, in the stipulation of facts, admitted petitioner's existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes This admission shows its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question o THUS respondent has no right to appropriate the same for use on its products which are similar to those being produced by petitioner A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name Appropriation by another of the dominant part of a corporate name is an infringement o Respondent's witness had no Idea why respondent chose "UNIVERSAL CONVERSE" as trademark and the record discloses no reasonable explanation for respondent's use of the word "CONVERSE" in its trademark Such unexplained use by respondent of the dominant word of petitioner's corporate name lends itself open to the suspicion of fraudulent motive to trade upon petitioner's reputation o On the other hand, the testimony of petitioner's witness, who is a legitimate trader as well as the invoices evidencing sales of petitioner's products in the Philippines, give credence to petitioner's claim that it has earned a business reputation and goodwill in this country The sales invoices submitted by petitioner's lone witness show that it is the word "CONVERSE" that mainly Identifies petitioner's products, i.e. "CONVERSE CHUCK TAYLOR, 14 "CONVERSE ALL STAR," 15 ALL STAR CONVERSE CHUCK TAYLOR," 16 or "CONVERSE SHOES CHUCK and TAYLOR." said sales invoices provide the best proof that there were actual sales of petitioner's products in the country and that there was actual use for a protracted period of petitioner's trademark or part thereof through these sales the most convincing proof of use of a mark in commerce is testimony of such witnesses as customers, or the orders of buyers during a certain period HERE, Petitioner's witness, affirmed her lack of business connections with petitioner, has testified as such customer, supporting strongly petitioner's move for trademark pre-emption The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered insignificant, considering that they appear to be of high expensive quality, which not too many basketball players can afford to buy. Any sale made by a legitimate trader from his store is a commercial act establishing trademark rights since such sales are made in due course of business to the general public, not only to limited individual Such actual sale of goods in the local market establishes trademark use which serves as the basis for any action aimed at trademark pre- exemption Moreover, while Converse Rubber Corporation is not licensed to do business in the country and is not actually doing business here, it does not mean that its goods are not being sold here or that it has not earned a reputation or goodwill as regards its products Thus, contrary to the determination of the respondent Director of Patents, the word "CONVERSE" has grown to be Identified with petitioner's products, and in this sense, has acquired a second meaning within the context of trademark and tradename laws Another factor why respondent's applications should be denied is the confusing similarity between its trademark "UNIVERSAL CONVERSE AND DEVICE" and petitioner's corporate name and/or its trademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing public to the prejudice of petitioner o The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is imprinted in a circular manner on the side of its rubber shoes. Also, the trademark of petitioner which reads "CONVERSE CHUCK TAYLOR" is imprinted on a circular base attached to the side of its rubber shoes o The deteminative factor in ascertaining whether or not marks are confusingly similar to each other "is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying public Sufficient: similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the new brand for it." Even if not all the details just mentioned were identical, with the general appearance alone of the two products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived When the law speaks co-purchaser," the reference is to ordinary average purchaser It is not necessary in either case that the resemblance be sufficient to deceive experts, dealers, or other persons specially familiar with the trademark or goods involve The similarity in the general appearance of respondent's trademark and that of petitioner would evidently create a likelihood of confusion among the purchasing public But even assuming, that the trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner, the likelihood of confusion would still subsists, not on the purchaser's perception of the goods but on the origins thereof By appropriating the word "CONVERSE," respondent's products are likely to be mistaken as having been produced by petitioner THUS the risk of damage is not limited to a possible confusion of goods but also includes confusion of reputation if the public could reasonably assume that the goods of the parties originated from the same source Director of Patents erred in concluding that since the petitioner is not licensed to do business in the country and is actually not doing business on its own in the Philippines, it has no name to protect in the forum and thus, it is futile for it to establish that "CONVERSE" as part of its corporate name identifies its rubber shoes o JURISPRUDENCE (La Chemise Lacoste case): a foreign corporation has a right to maintain an action in the forum even if it is not licensed to do business and is not actually doing business on its own therein Since sole purpose of the action is to protect its reputation, its corporate name, its goodwill whenever that reputation, corporate name or goodwill have, through the natural development of its trade, established themselves. o This is consistent with the Convention of the Union of Paris for the Protection of Industrial Property to which the Philippines became a party on September 27, 1965. Article 8 thereof provides that "a trade name [corporate name] shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of the trademark" object of the Convention is to accord a national of a member nation extensive protection "against infringement and other types of unfair competition" Convention implemented by Sec. 37 of RA No. 166 Trademark Law: Sec. 37. Rights of Foreign Registrants-Persons who are nationals of, domiciled or have a bona fide or effective business or commercial establishment in any foreign country, which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party, shall be entitled to the benefits and subject to the provisions of this Act ...Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks. DISPOSITIVE: decision of the Director of Patents is hereby set aside and a new one entered denying Respondent Universal Rubber Products, Inc.'s application for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" on its rubber shoes and slippers 16. McDonalds Corp. v. L.C. Big Mak Burger, Inc, G.R. No. 143993, August 18, 2004. - Kite Topic: Trademark Infringement/Unfair Competition Facts: McDonalds is a corp organized under the laws of Delaware, US. It owns a family of marks including Big Mac mark for its double-decker hamburger sandwich. Oct. 16, 1979: McDonalds registered this trademark with the US Trademark Registry September 1981: McDonalds introduced its Big Mac hamburger in PH July 18, 1985: PBPTT (now IPO) allowed registration of the Big Mac mark in the Principal Register based on its Home Registration in the US 1982-1990: McDonalds spent P10.5M in advertisement for Big Mac hamburger alone Mc George, a domestic corp, is McDonalds Philippine franchisee LC Big Mak Burger Inc. operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Its menu includes hamburger. Oct. 21, 1988: LC Big Mak applied with PBPTT for the registration of the Big Mak mark for its hamburger. McDonalds opposed on the ground that Big Mak was a colorable imitation of its registered Big Mac mark for the same food products. It also informed Dy, chairman of the Board of Directors of LC Big Mak, of its exclusive right to the Big Mac mark and requested him to desist from using the Big Mac mark or any similar mark. June 6, 2000: McDonalds sued LC Big Mak in RTC Makati for trademark infringement and unfair competition. LC Big Mak: McDonalds does not have an exclusive right to the Big Mac mark or to any other similar mark. Isaiyas and Topacio registered the same mark prior to McDonalds registration; Big Mak is not a colorable imitation of Big Mac McDonalds: while Isaiyas and Topacio registered the Big Mac mark ahead of time, Isaiyas did so only in the Supplemental Register of the PBPTT and such registration does not provide any protection. McDonalds disclosed that it had acquired Topacios rights to his registration in a Deed of Assignment dated May 18, 1981. RTC: LC Big Mak liable for trademark infringement and unfair competition CA reversed RTC Issues: 1. WON LC Big Mak used the words Big Mak not only as part of the corporate name but also as a trademark for their hamburger products? 2. WON LC Big Mak is liable for trademark infringement and unfair competition? Ruling: Manner LC Big Mak used Big Mak in their Business The plastic wrappings and plastic bags used by LC Big Mak for their hamburger bore the words Big Mak. Its cash invoices simply refer to their hamburger sandwiches as Big Mak. The snack vans carry the words LC Big Mak Burger, Inc. It was only during trial that LC presented in evidence the plastic wrappers and bags for their hamburger sandwiches relied on by the CA. LCs plastic wrappers and bags were identical with those McDonalds presented during the hearings for the injunctive writ except that the letters LC and the words Burger, Inc. in LCs evidence were added above and below the words Big Mak. Since the complaint was based on facts existing before and during the hearings on the injunctive writ, the facts established during those hearings are the proper factual bases for the disposition of the issues raised in the petition. Trademark Infringement RA 166, Sec. 22: trademark infringement: Infringement, what constitutes. Any person who [1] shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or [2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used uponor in connection with such goods, business or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided. McDonalds base its cause of action under the first part of Sec. 22(LC allegedly used, w/o its consent, a colourable imitation of the Big Mac mark in advertising and selling LCs hamburger sandwiches. This likely caused confusion in the mind of the purchasing public on the source of the hamburgers or the identity of the business. Elements of trademark infringement: 1. validity of plaintiffs mark 2. plaintiffs ownership of the mark 3. use of the mark or its colourable imitation by the alleged infringer results in likelihood of confusion. Likelihood of confusion is the gravamen of trademark infringement. A mark is valid if it is distinctive and thus not barred from registration under RA 166, Sec. 4. Once registered, not only the marks validity but also the registrants ownership of the mark is prima facie presumed. LC: in the Big Mac mark, only the word Mac is valid because the word Big is generic and descriptive and thus incapable of exclusive appropriation SC: The Big Mac mark is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods such as Lite for beer
or Chocolate Fudge for chocolate soda drink. Descriptive marks convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as Arthriticare for arthritis medication Big Mac falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents.As such, it is highly distinctive and thus valid. Duly established is McDonalds exclusive ownership of the Big Mac mark. Although Topacio and the Isaiyas Group registered the Big Mac mark ahead of McDonalds, Topacio, as petitioners disclosed, had already assigned his rights to McDonalds. The Isaiyas Group, on the other hand, registered its trademark only in the Supplemental Register. A mark which is not registered in the Principal Register, and thus not distinctive, has no real protection. Confusion arising from the use of similar or colorable imitation marks Confusion of goods (product confusion) - the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other Confusion of business (source or origin confusion)- though the goods of the parties are different, the defendants product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist First trademark law (Act 666), infringement was limited to confusion of goods only (goods of a similar kind) RA 166: expanded the scope of trademark infringement to include use of the mark or its colorable imitation that is likely to result in confusion on the source or origin of such goods or services, or identity of such business McDonalds: use of the Big Mak mark results in confusion of goods, particularly with respect to McDonalds Big Mac burger. LCs use of the Big Mak mark in the sale of hamburgers, the same business that McDonalds is engaged in, results in confusion of business LC: Big Mak hamburgers cater mainly to low-income group while Big Mac hamburgers cater to middle and upper income groups SC: the likelihood of confusion of business remains, since the low-income group might be led to believe that Big mak hamburgers are the low-end hamburgers marketed by McDonalds. After all, McDonalds have the exclusive right to use the Big Mac mark. LC would benefit by associating their low-end hamburgers, through the use of the big Mak mark, with the high-end Big Mac hamburgers, leading to likelihood of confusion in the identity of business LC: Big Mak also used on other products like siopao, noodles and pizza unlike Big Mac which is only used for double-decker hamburgers. Big Mac burgers are sold in Styrofoam boxes with McDonalds logo and trademark. Big Mak burgers are in plastic wrappers and plastic bags. McDonalds restaurants are air-conditioned w/ drive-thru service, compared to LCs mobile vans. These factors cannot negate the fact that LC used Big Mak mark on hamburgers, the same food product that McDonalds sell with the use of their registered mark Big Mac The registered trademark owner may use his mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. The registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. 2 tests in determining likelihood of confusion: o Dominancy test- focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion o Holistic test- consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity SC has relied on the dominancy test rather than the holistic test. Under the dominancy test, consider the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. The test of dominancy is now explicitly incorporated into law in Sec. 155.1 of the IP Code (infringement as the colorable imitation of a registered mark xxx or a dominant feature thereof) Applying the dominancy test, SC found that the use of Big Mak mark results in likelihood of confusion: o Big Mak sounds exactly the same as Big Mac o 1 st word in Big Mak is exactly the same as the 1 st
word in Big Mac o 1 st 2 letters in Mak are the same as the 1 st 2 letters in Mac o k sounds the same as c o In Filipino, k replaces c in spelling. Visually, the 2 marks have both 2 words and 6 letters. Clearly, LC adopted in Big Mak not only the dominant but also almost all the features of Big Mac A person cannot distinguish Big Mac from Big Mak by their sound. When one hears a Big Mac or Big Mak hamburger advertisement over the radio, one would not know whether the Mac or Mak ends with a c or k. LCs inability to explain sufficiently how and why they came to choose Big Mak indicates their intent to imitate Big Mac LC: Big Mak mark was inspired by the 1 st names of Maxima (mother) and Kimsoy (father) SC: absent proof that the adoption of Big Mak mark was due to honest mistake or was fortuitous, the inescapable conclusion is that LC adopted Big Mak mark to ride on the coattails of the more established Big Mac mark. Confusion is likely to result in the public mind. McDonalds failure to present proof of actual confusion does not negate their claim of trademark infringement. Sec. 22 requires less stringent standard (likelihood of confusion). While proof of actual confusion is the best evidence of infringement, its absence is inconsequential. Unfair Competition Essential elements: o Confusing similarity in the general appearance of the goods o Intent to deceive the public and defraud a competitor Confusing similarity may or may not result from similarity in the marks, but may result from other external factors in the packaging or presentation of the goods Intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown. Trademark infringement is a form of unfair competition. It constitutes unfair competition when there is not merely likelihood of confusion, but also actual or probable deception on the public because of the general appearance of the goods. Trademark infringement w/o unfair competition: when the infringer discloses on the labels containing the mark that he manufactures the goods, thus preventing the public from being deceived that the goods originate from the trademark owner. McDonalds: LC fraudulently passed off their hamburgers as Big Mac hamburgers Passing off/palming off defendant, by imitative devices on the general appearance of the goods, misleads prospective purchasers into buying his merchandise under the impression that they are buying that of his competitors. Big Mac -packaging material is a styrofoam box with the McDonalds logo and trademark in red with block capital letters printed on it. All letters of the Big Mac mark are also in red and block capital letters. Big Mak script print is in orange with only the letter B and M being capitalized and the packaging material is plastic wrapper. McDonalds logo and mascot are the umbrella M and Ronald McDonalds, LCs mascot: chubby boy called Macky displayed or printed between the words Big and Mak. The dissimilarities in the packaging are minor compared to the stark similarities in the words that give Big Mak hamburgers the general appearance of Big Mac hamburgers. Section 29(a): the similarity in the general appearance of the goods may be in the devices or words used on the wrappings. LC applied on their plastic wrappers and bags almost the same words that McDonalds use on their styrofoam box. The words Big Mak which are almost the same, aurally and visually, as the words Big Mac. The dissimilarities in the material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings. Section 29(a) also provides that the defendant gives his goods the general appearance of goods of another manufacturer. LCs goods are hamburgers which are also the goods of McDonalds. If LC sold egg sandwiches only instead of hamburger sandwiches, its use of the Big Mak mark would not give their goods the general appearance of Big Mac hamburgers. In such case, there is only trademark infringement but no unfair competition. There is no notice to the public that the Big Mak hamburgers are products of L.C. Big Mak Burger, Inc. Plastic wrappers and bags with the Big Mak mark without the name L.C. Big Mak Burger, Inc. = intent to deceive the public LCs belated presentation of plastic wrappers and bags bearing the name of L.C. Big Mak Burger, Inc. as the seller of the hamburgers is an after-thought designed to exculpate them from their unfair business conduct. 17. Levi Strauss (Phil.), Inc. v. Tony Lim, G.R. No. 162311, December 4, 2008. - Michael Concept/Topic: Trademark, Confusion, Infringement, Unfair Competition, Point of Sale vs. Post-Sales Confusion
LEVI STRAUSS (PHILS.), INC., vs TONY LIM, December 4, 2008
Facts: Petitioner Levi Strauss (Phils.), Inc. Is a duly-registered domestic corporation. It is a wholly-owned subsidiary of Levi Strauss & Co. (LS & Co.) A Delaware,USA company. In 1972, LS & Co. granted petitioner a non-exclusive license to use its registered trademarks and trade names for the manufacture and sale of various garment products, primarily pants, jackets, and shirts, in the Philippines. These trademarks are registered in over 130 countries, including the Philippines, and were first used in commerce in the Philippines in 1946. Sometime in 1995, petitioner lodged a complaint before the Inter-Agency Committee on Intellectual Property Rights, alleging that an establishment owned by respondent Tony Lim, doing business under the name Vogue Traders Clothing Company, was engaged in the manufacture, sale, and distribution of products similar to those of petitioner and under the brand name LIVES, and was granted the filing of an information against respondent. Respondent then filed his own motion for reconsideration of the Bello resolution, the DOJ then ordered the dismissal of the complaint.. Dissatisfied with the DOJ rulings, petitioner sought recourse with the CA via a petition for review under Rule 43 of the 1997 Rules of Civil Procedure. On October 17, 2003, the appellate court affirmed the dismissal of the unfair competition complaint. The CA pointed out that to determine the likelihood of confusion, mistake or deception, all relevant factors and circumstances should be taken into consideration, such as the circumstances under which the goods are sold, the class of purchasers, and the actual occurrence or absence of confusion. Thus, the existence of some similarities between LIVES jeans and LEVIS garments would not ipso facto equate to fraudulent intent on the part of respondent. The CA noted that respondent used affirmative and precautionary distinguishing features in his products for differentiation. The appellate court considered the spelling and pronunciation of the marks; the difference in the designs of the back pockets; the dissimilarity between the carton tickets; and the pricing and sale of petitioners products in upscale exclusive specialty shops. The CA also disregarded the theory of post-sale confusion propounded by petitioner, relying instead on the view that the probability of deception must be determined at the point of sale.
Issues: 1) W/N The CA gravely erred in ruling that actual confusion is necessary to sustain a charge of unfair competition, and that there must be direct evidence or proof of intent to deceive the public. NO 2) W/N the CA gravely erred in ruling that respondents Lives jeans do not unfairly compete with Levis jeans and/or that there is no possibility that the former will be confused for the latter, considering that respondents Lives jeans blatantly copy or colorably imitate no less than six (6) trademarks of Levis jeans. NO
Ruling: 1) Generally, unfair competition consists in employing deception or any other means contrary to good faith by which any person shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established goodwill, or committing any acts calculated to produce such result. The elements of unfair competition under Article 189(1) of the Revised Penal Code are: (a) That the offender gives his goods the general appearance of the goods of another manufacturer or dealer; (b) That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping of their packages, or in the (3) device or words therein, or in (4) any other feature of their appearance; (c) That the offender offers to sell or sells those goods or gives other persons a chance or opportunity to do the same with a like purpose; and (d) That there is actual intent to deceive the public or defraud a competitor. All these elements must be proven. In finding that probable cause for unfair competition does not exist, the investigating prosecutor and Secretaries Guingona and Cuevas arrived at the same conclusion that there is insufficient evidence to prove all the elements of the crime that would allow them to secure a conviction. Secretary Guingona discounted the element of actual intent to deceive by taking into consideration the differences in spelling, meaning, and phonetics between LIVES and LEVIS, as well as the fact that respondent had registered his own mark. While it is true that there may be unfair competition even if the competing mark is registered in the Intellectual Property Office, it is equally true that the same may show prima facie good faith. Indeed, registration does not negate unfair competition where the goods are packed or offered for sale and passed off as those of complainant. However, the marks registration, coupled with the stark differences between the competing marks, negate the existence of actual intent to deceive, in this particular case. 2) Petitioner argues that the element of intent to deceive may be inferred from the similarity of the goods or their appearance. The argument is specious on two fronts. First, where the similarity in the appearance of the goods as packed and offered for sale is so striking, intent to deceive may be inferred. However, as found by the investigating prosecutor and the DOJ Secretaries, striking similarity between the competing goods is not present. Second, the confusing similarity of the goods was precisely in issue during the preliminary investigation. As such, the element of intent to deceive could not arise without the investigating prosecutors or the DOJ Secretarys finding that such confusing similarity exists. Since confusing similarity was not found, the element of fraud or deception could not be inferred. We cannot sustain Secretary Bellos opinion that to establish probable cause, it is enough that the respondent gave to his product the general appearance of the product of petitioner. It bears stresing that that is only one element of unfair competition. All others must be shown to exist. More importantly, the likelihood of confusion exists not only if there is confusing similarity. It should also be likely to cause confusion or mistake or deceive purchasers. Thus, the CA correctly ruled that the mere fact that some resemblance can be pointed out between the marks used does not in itself prove unfair competition. To reiterate, the resemblance must be such as is likely to deceive the ordinary purchaser exercising ordinary care. The consumer survey alone does not equate to actual confusion. We note that the survey was made by showing the interviewees actual samples of petitioners and respondents respective products, approximately five feet away from them. From that distance, they were asked to identify the jeans brand and state the reasons for thinking so. This method discounted the possibility that the ordinary intelligent buyer would be able to closely scrutinize, and even fit, the jeans to determine if they were LEVIS or not. It also ignored that a consumer would consider the price of the competing goods when choosing a brand of jeans. It is undisputed that LIVES jeans are priced much lower than LEVIS.
18. Ang v. Teodoro, G.R. No. 48226, December 14, 1942. - Arianne Important case, read in full. Topics covered: confusion, dilution, doctrine of secondary meaning, injury & damages FACTS Respondent Toribio Teodoro, has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade- mark on September 29, 1915, and as trade-name on January 3, 1933. Petitioner registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. In that year she advertised the factory which she had just built and it was when this was brought to the attention of the herein respondent filed a complaint against the petitioner. The trial court absolved the complaint on the grounds that the two trademarks are dissimilar and are used on different and non-competing goods; that there had been no exclusive use of the trade-mark by the plaintiff(petitioner); and that there had been no fraud in the use of the said trade-mark by the defendant because the goods on which it is used are essentially different from those of the plaintiff. The Court of Appeals reversed the trial courts judgment holding that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning. ISSUE 1. Whether or not the doctrine of secondary meaning can be applied to respondents trade-mark. 2. Whether or not the goods or articles belong to the same class of merchandise? 3. Whether or not Ang Tibay is a descriptive term? RULING OF THE COURT 1. YES. The Function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied. Ang Tibay, as used by the respondent to designate his wares, had exactly performed that function for 22 years before the petitioner adopted it as a trade-mark in her own business. Ang Tibay shoes and slippers are, by association, known throughout the Philippines as products of the Ang Tibay factory owned and operated by the respondent. Even if Ang Tibay, therefore, were not capable of exclusive appropriation as a trade- mark, the application of the doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by respondents long and exclusive use of said phrase with reference to his products and his business, it has acquired a propriety connotation. 2. YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test employed by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods. We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain pens and razor blades, for instance. It is certainly not far-fetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. 3. NO. "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. In this connection we do not fail to note that when the petitioner herself took the trouble and expense of securing the registration of these same words as a trademark of her products she or her attorney as well as the Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive term and hence could be legally used and validly registered as a trade-mark. ALSO: Other famous cases cited on the margin, wherein the courts granted injunctive relief, involved the following trade-marks or trade-names: "Kodak," for cameras and photographic supplies, against its use for bicycles.
"Penslar," for medicines and toilet articles, against its use for cigars;
"Rolls-Royce," for automobiles. against its use for radio tubes;
Vogue," as the name of a magazine, against its use for hats;
"Kotex," for sanitary napkins, against the use of "Rotex" for vaginal syringes;
"Sun-Maid," for raisins, against its use for flour;
"Yale," for locks and keys, against its use for electric flashlights; "Waterman," for fountain pens, against its use for razor blades.
19. Asia Brewery, Inc v. Court of Appeals and San Miguel Corporation, G.R. No. 103543, July 5, 1993. - Kester Topic: Test of Dominancy for infringement cases & unfair competition Facts: San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market. The trial court dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition against" SMC On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court, finding the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. ABI then filed a petition for certiorari. Issue: 1. Do the words PALE PILSEN as part of ABIs trademark constitute infringement of SMCs trademark? 2. Does the use of a similar looking bottle (but not identical) constitute unfair competition? Ruling: 1. No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part of ABIs trademark, are generic words descriptive of the color (pale), of a type of beer (pilsen), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen, Czechislovakia and became famous in the Middle Ages. Infringement is determined by the "test of dominancy" rather than by differences or variations in the details of one trademark and of another. The rule was formulated in Co Tiong Sa vs. Director of Patents, 95 Phil. 1, 4 (1954); reiterated in Lim Hoa vs. Director of Patents, 100 Phil. 214, 216-217 (1956), thus: It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. Besides the dissimilarity in their names, the following other dissimilarities in the trade dress or appearance of the competing products abound: (1) The SAN MIGUEL PALE PILSEN bottle has a slender tapered neck. The BEER PALE PILSEN bottle has a fat, bulging neck. (2) The words "pale pilsen" on SMC's label are printed in bold and laced letters along a diagonal band, whereas the words "pale pilsen" on ABI's bottle are half the size and printed in slender block letters on a straighthorizontal band. (See Exhibit "8-a".). (3) The names of the manufacturers are prominently printed on their respective bottles. SAN MIGUEL PALE PILSEN is "Bottled by the San Miguel Brewery, Philippines," whereas BEER PALE PILSEN is "Especially brewed and bottled by Asia Brewery Incorporated, Philippines." (4) On the back of ABI's bottle is printed in big, bold letters, under a row of flower buds and leaves, its copyrighted slogan: "BEER NA BEER!" Whereas SMC's bottle carries no slogan. (5) The back of the SAN MIGUEL PALE PILSEN bottle carries the SMC logo, whereas the BEER PALE PILSEN bottle has no logo. (6) The SAN MIGUEL PALE PILSEN bottle cap is stamped with a coat of arms and the words "San Miguel Brewery Philippines" encircling the same. The BEER PALE PILSEN bottle cap is stamped with the name "BEER" in the center, surrounded by the words "Asia Brewery Incorporated Philippines." (7) Finally, there is a substantial price difference between BEER PALE PILSEN (currently at P4.25 per bottle) and SAN MIGUEL PALE PILSEN (currently at P7.00 per bottle). One who pays only P4.25 for a bottle of beer cannot expect to receive San Miguel Pale Pilsen from the storekeeper or bartender. The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark. No one may appropriate generic or descriptive words. They belong to the public domain. 2. The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-colored steinie bottles of 320 ml. capacity and is also advertised in print, broadcast, and television media, does not necessarily constitute unfair competition. Unfair competition is the employment of deception or any other means contrary to good faith by which a person shall pass off the goods manufactured by him or in which he deals, or his business, or services, for those of another who has already established goodwill for his similar goods, business or services, or any acts calculated to produce the same result In this case, the question to be determined is whether ABI is using a name or mark for its beer that has previously come to designate SMC's beer, or whether ABI is passing off its BEER PALE PILSEN as SMC's SAN MIGUEL PALE PILSEN. The use of ABI of the steinie bottle, similar but not identical to the SAN MIGUEL PALE PILSEN bottle, is not unlawful. As pointed out by ABI's counsel, SMC did not invent but merely borrowed the steinie bottle from abroad and it claims neither patent nor trademark protection for that bottle shape and design SMC's being the first to use the steinie bottle does not give SMC a vested right to use it to the exclusion of everyone else. Being of functional or common use, and not the exclusive invention of any one, it is available to all who might need to use it within the industry. Nobody can acquire any exclusive right to market articles supplying simple human needs in containers or wrappers of the general form, size and character commonly and immediately used in marketing such articles That the ABI bottle has a 320 ml. capacity is not due to a desire to imitate SMC's bottle because that bottle capacity is the standard prescribed under Metrication Circular No. 778, dated 4 December 1979, of the Department of Trade, Metric System Board. With regard to the white label of both beer bottles, ABI explained that it used the color white for its label because white presents the strongest contrast to the amber color of ABI's bottle; it is also the most economical to use on labels, and the easiest to "bake" in the furnace (p. 16, TSN of September 20, 1988). No one can have a monopoly of the color amber for bottles, nor of white for labels, nor of the rectangular shape which is the usual configuration of labels. Needless to say, the shape of the bottle and of the label is unimportant. What is all important is the name of the product written on the label of the bottle for that is how one beer may be distinguished form the others. 20. In Re Petition for Registration of Trademark Freedom under Section 4 of Republic Act No. 166 filed in the Philippines Patent Office bearing Serial No. 38 Co Tiong Sa v. Director of Patents, 95 Phil. 1, 4, G.R. No. L-5378, May 24, 1954. - Mars Co Tiong Sa vs. Director of Patents, Saw Woo Chiong and Co. Concept: Test of Dominancy Facts: Applicant: Co Tiong Sa (Co) Oppositor: Saw Woo Chiong and Co. (Saw) Co Tiong Sa (Co) applied for registration of the trademark Freedom and its corresponding design with the Director of Patents. Director of Patents denied the registration. Co has used the trademark on undershirts and T-shirts since March 1947. The trademark sought to be registered is "Freedom". [Co attached facsimiles to the original application showing the labels. Exhibit D-1[Cos label]: The word "Freedom" is in hand print, with a slight to the right. The said word is preceded by a triangle, with the letter "F" inside and small letters "H.L." under. A capital letter "L" is on the lower right- hand corner; and all of these are enclosed in a rectangle of double lines. Exhibit D-2: The label is the same word "Freedom" with a capital letter "M" above it, a flourish under the word "Freedom", and the words "HIGH QUALITY" thereunder. The label used for boxes is similar to label Exhibit D-1, except that the rectangle is in a heavy line and is longer.
Meanwhile Saw has used its trademark since 1938 and it had been advertised extensively in newspapers, magazines, etc. This trademark was registered in 1947 in the Bureau of Commerce and re-registered in the Patent Office on September 22, 1948. This trademark is used not only on shirts, but also on polo shirts, undershirts, pajamas, skippers, and T-shirts, although in the year 1947 Saw discontinued the manufacture of shirts and skippers. o Exhibit D-3: The word "Freeman" is in hand print, with a right slant, above the middle of which is a vignette of a man wearing a to what (NB: This is the original text; might be HAT), which vignette is preceded by the small word "The" in print and followed by two parallel lines close to each other, and the words "PERFECT WEAR" in smaller letters under the word "FREEMAN". Director of Patents: 1. The central idea of each trademark give the same general impression (Freedom vs. Freeman). Hence, they are confusingly similar. 2. The oppositor is not required to introduce testimony on substantiate the claim made in its opposition. Issue 1: Whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers (Yes)
If the details of the two trademarks are to be considered, many differences would be noted that would enable a careful and scrutinizing eye to distinguish one trademark from the other. o Vignette of a man wearing a to what (hat?) vs. Triangle with the letter "F" on the right hand corner of the label o No rectangle enclosing the mark vs. Rectangle enclosing the mark However, differences of variations in the details of one trademark and of another are not the legally accepted tests of similarity in trademarks.
Test of Dominancy The question of infringement of a trademark is to be determined by the test of dominancy. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or limitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. Test of Confusion in the Mind of the Public/Unwary Customers/Purchasers: Whether the public is likely to be deceived is a question of fact. When a person sees an object, a central or dominant idea or picture thereof is formed in his mind. In this mind- picture the slight or minor decorations are lost sight of, and the central figure only is retained. For a customer or purchaser who sees a label, he retains in his mind the dominant characteristics or features or central idea in the label, and does not retain or forgets the attendant decorations, flourishes, or variations. The ordinary customer does not scrutinize the details of the label; he forgets or overlooks these, but retains a general impression, or a central figure, or a dominant characteristic. Reason why he only retains the central figure: The average person usually will not, and often can not, take in at a casual glance all, or even a large part of the details of what he looks at. The average buyer usually seeks a sign, some special, easily remembered earmarks of the brand he has in mind. It may be the color, sound, design, or a peculiar shape or name. Once his eyes see that or his ear hears it, he is satisfied. An unfair competitor need not copy the entire mark to accomplish his fraudulent purpose. It is enough if he takes the one feature which the average buyer is likely to remember. (Nims, The Law of Unfair Competition and Trademarks) In order to constitute infringement, it is not necessary that the trademark be literally copied. Neither is it necessary that every word be appropriated. There may be infringement where the substantial and distinctive part of the trademark is copied or imitated. The resemblances may so far dominate the differences as to be likely to deceive ordinary purchasers. Test of Dominancy Applied The word "FREEDOM" conveys a similar idea as the word "FREEMAN". The style in which both capital "F" are written are similar. The print and slant of the letters are also similar. An ordinary purchaser or an unsuspecting customer who has seen the oppositor's label sometime before will not recognize the difference between that label and applicant's label. He may notice some variations, but he will ignore these, believing that they are variations of the same trademark to distinguish one kind or quality of goods from another. [The court enumerated examples in jurisprudence where two words/labels were held to have the same significance or appearance and meaning. See original] Issue 2: Whether or not witnesses need to be presented to prove infringement (No) The question of similarity or dissimilarity while it is a question of opinion, is to be determined by the court mainly on the basis of the facsimiles or labels or pictures submitted to the Director of Patents. Similarity or dissimilarity can be determined by a mere examination and comparison of the competing trademarks. Failure on the part of the oppositor to submit the testimony of witnesses, who are to give opinions on the alleged similarity or dissimilarity, can not, therefore, be a ground for a dismissal of an opposition.
21. Fruit of the Loom, Incorporated v. Court of Appeals and General Garments Corporation, G.R. L-32747, November 29, 1984. - Elle Topic: Trademark Infringement, Dominant v Holistic Test
Petitioner, a foreign corporation, is the registrant of a trademark, FRUIT OF THE LOOM, in the Phil Patent Office. It was issued two Certificates of Registration: 6227 on 1957 for mens, womens and childrens underwear, including womens panties and 6680 on 1958 for knitted, netted, textile fabrics. Respondent, a domestic corporation, is the registrant of a trademark FRUIT FOR EVE in the Phil Patent Office, issued with Certificate of Registration 10160 on 1963 covering womens panties and pajamas. Thus: petitioner filed a complaint for infringement of trademark and unfair competition, as respondents trademark is confusingly similar to the petitioners. Note admitted admissions during pre-trial: Fruit of the Loom registered without the notice Reg. Phil. Patent Off. while Fruit of Eve has, and that petitioner didnt protest when the respondent registered. WON respondents FRUIT OF EVE and its hangtag are confusingly similar to petitioners FRUIT OF THE LOOM and its hangtag so as to constitute an infringement of the latters trademark rights and justify the cancellation of the former. NO. Petitioner: The word FRUIT is not a generic word, which isnt capable of exclusive appropriation by petitioner. The color get up and general appearance of respondents hang tag, a red apple, is a colorable imitation to that of petitioners, and upon seeing the word FRUIT and the red apple, average and ordinary consumers would be led to believe that the respondents products are that of the petitioners. Respondent: trademark used on ladies panties and pajamas, while petitioners is used even on mens underwear and pajamas. There is infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity. There is no better evidence that a visual comparison of the two hangtags. A comparison of the words FRUIT is not the only determinant factor, but the trademarks in their entirety as they appear must also be considered in relation to the goods to which they are attached. Focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. Here: the lone similar word is FRUIT. By mere pronouncing the two marks, it could hardly be said that it will provoke confusion as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR EVE. The dominant feature of both trademarks is not the word FRUIT for even in the printing of the trademark in both hang tags, the word FRUIT is not at all made dominant over the other words. As to the design and coloring scheme of the hang tags, while there are similarities in the two marks: the red apple at the center of each mark, there are also differences which are glaring and striking to the eye such as: a. The shape of petitioner's hang tag is round with a base that looks like a paper rolled a few inches in both ends; while that of private respondent is plain rectangle without any base. b. The designs differ. Petitioner's trademark is written in almost semi-circle while that of private respondent is written in straight line in bigger letters than petitioner's. Private respondent's tag has only an apple in its center but that of petitioner has also clusters of grapes that surround the apple in the center. c. The colors of the hangtag are also very distinct from each other. Petitioner's hangtag is fight brown while that of respondent is pink with a white colored centerpiece. The apples which are the only similarities in the hangtag are differently colored. Petitioner's apple is colored dark red, while that of private respondent is light red. Thus: The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags. The trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each other as to confuse or deceive an ordinary purchaser. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question. Furthermore, a person who buys petitioner's products and starts to have a liking for it, will not get confused and reach out for private respondent's products when she goes to a garment store. Denied. 22. Del Monte Corporation and Philippine Packing Corporation v. Court of Appeals and Sunshine Sauce Manufacturing Industries, G.R. No. 78325, January 25, 1990. - Andrew Holistic Test DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs. CA and SUNSHINE SAUCE MANUFACTURING INDUSTRIES Facts: Del Monte Corp is a foreign company organized under the laws of the US and not engaged in business in the Philippines. Philippine Packing Corp is a domestic corporation duly organized under the laws of the Philippines. Del Monte granted Philpack the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. Del Monte authorized Philpack to register with the Philippine Patent Office the Del Monte catsup bottle configuration, for which it was granted Certificate of Trademark Registration No. SR-913 by the Philippine Patent Office under the Supplemental Register. Del Monte also obtained two registration certificates for its trademark "DEL MONTE" and its logo. Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the Bureau of Domestic Trade in 1980, to engage in the manufacture, packing, distribution and sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. Their logo was registered in the Supplemental Register in 1983. The product was contained in various kinds of bottles, including the Del Monte bottle, which respondent bought from junk shops for recycling. Having received reports that the Sunshine was using its exclusively designed bottles and a logo confusingly similar to Del Monte's, Philpack and Del Monte filed a complaint against the respondent for infringement of trademark and unfair competition. Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners. The RTC dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties; that the defendant had ceased using the petitioners' bottles; and that the defendant became the owner of the said bottles upon its purchase thereof from the junk yards; and that the complainants had failed to establish the defendant's malice or bad faith, an essential element of infringement of trademark or unfair competition. This decision was affirmed by the Court of Appeals, hence this petition Issue: 1. Whether respondent are liable for infringement of trademark and unfair competition? (Yes) 2. Whether respondent is guilty of infringement for having used the Del Monte bottle (Yes) Ratio: On the first Issue, side-by-side comparison, as done by the lower courts, is not the final test of similarity. Ordinary buyers are usually in a hurry and dont make such scrutiny. The question whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it with the original. The general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone. In making purchases, the consumer must depend upon his recollection of the appearance of the product which he intends to purchase. The buyer having in mind the mark/label of the respondent must rely upon his memory of the petitioner's mark. Unlike the judge who has ample time to minutely examine the labels in question in the comfort of his sala, the ordinary shopper does not enjoy the same opportunity. To determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. In cases of infringement and unfair competition the court should be conscious of the fact that marks need not be identical. A confusing similarity will justify the intervention of equity. The judge must be aware of the fact that usually a defendant in cases of infringement does not normally copy but makes only colorable changes. The most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts. The CA failed to take into consideration factors which should have affected its conclusion, to wit: age, training and education of the usual purchaser, the nature and cost of the article, whether the article is bought for immediate consumption and also the conditions under which it is usually purchased . Among these, what essentially determines the attitude of the purchaser is the cost of the goods. An ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. Mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care. In this latter category is catsup. In this case, the Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. When a manufacturer prepares to package his product, he has a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive. On the second issue, respondent is not guilty of infringement for having used the Del Monte bottle because the configuration of the bottle was merely registered in the Supplemental Register. Although Del Monte has actual use of the bottle's configuration, they cannot claim exclusive use thereof because it has not been registered in the Principal Register. However, we find that Sunshine, despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its intention to capitalize on the Del Montes reputation and goodwill and pass off its own product as that of Del Monte. The lower court declared that the registration of the Sunshine label belied the company's malicious intent to imitate petitioner's product however, it is to be noted that the Sunshine label was registered not in the Principal Register but only in the Supplemental Register where the presumption of the validity of the trademark, the registrant's ownership of the mark and his right to its exclusive use are all absent. Since registration was only in the Supplemental Register, this did not vest the registrant with the exclusive right to use the label nor did it give rise to the presumption of the validity of the registration. As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. With regard to the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should be permanently enjoined from the use of such bottles.
23. La Chemise Lacoste v. Fernandez, G.R. L-63796-97 May 2, 1984, G.R. L-65659 May 21, 1984. - Miggy
Fact Steinway & Sons was founded by Heinrich Steinweg in the USA while Grotrian-Steinweg was founded by his son, Theodore Steinweg, in Germany. Theodore subsequently migrated to the USA and sold the german company to his employees, one of which was Grotrian who eventually got control of the company. F. Theodor Steinweg granted the German buyers the privilege of continuing the business under the firm name "Successors to C. F. Theodor Steinweg" for ten years, but because of confusion with defendant the name was changed by agreement to "Grotrian, Helfferich, Schulz, Successors to Th. Steinweg." Later, however, Grotrian first registered the trademark Grotrian-Steinweg in Germany and then, in 1895, registered the name Steinweg. Grotrians use of the latter name caused defendant to bring an action in Germany resulting in the cancellation of the registration. Nevertheless, in December 1918, shortly after the armistice, the Grotrian family, plaintiff's owners, petitioned for an official change of the family name to "Steinweg or at least Grotrian-Steinweg," In 1925, the company established a sales presence in the US as a Delaware corporation called Grotrian-Steinweg Company. Upon discovering the sales in 1928, Steinway & Sons complained to the distributor and to Grotrian-Steinweg. A family representative of Steinway went to Germany to discuss the problem directly with the Grotrian-Steinweg family. Arriving at a private agreement, the two family leaders smoked a "peace cigar
and Grotrian-Steinweg subsequently stopped using the names "Steinweg" and "Grotrian-Steinweg" in the US. However, in 1952, plaintiff quietly reentered the American market on a mail order basis and for the next twenty years regularly shipped a relatively insignificant number of pianos to small dealers who sold only in their own localities. In 1961, Knut Grotrian-Steinweg (b. 1935) joined the company. In 1966, the company formed a contract with Wurlitzer to sell Grotrian-Steinweg pianos in the US, and the Steinway company brought suit in New York Steinway now sued Grotrian-Steinweg claiming there was confusion. Issue: WON the mark Grotrian-Steinweg on the piano is similar enough to Steinway or to Steinway & Sons that its use is likely to cause confusion, mistake or deception of any kind. Held: Yes, there is a high chance of confusion and initial interest confusion. In determining the existence of a likelihood of confusion, a number of factors must be considered. Among these are: the strength of the Steinway marks; the alleged infringer's purpose in adopting its marks; the degree of similarity between the marks; the degree of similarity between the products; the competitive proximity of the products; actual confusion; and the degree of care likely to be exercised by consumers THE STRENGTH OF THE STEINWAY MARKS o the name "Steinway" is so associated in the minds of prospective buyers and the public with defendant and its product that plaintiff's own dealers were of the opinion that "Steinway competition is tough, since the name STEINWAY has a magic influence on buyers," has an "attraction" or "excitement," and that "people seem to be swayed by this name PURPOSE in ADOPTING THE MARK o The ancestral Grotrians candidly adopted the name Steinweg for the sole purpose of exploiting the Steinweg name in exporting pianos to English-speaking countries. Moreover, they did this despite knowledge of defendant's trademark and its objections. THE DEGREE OF SIMILARITY BETWEEN AND THE COMPETITIVE PROXIMITY OF THE PRODUCTS. o Both parties manufacture lines of upright and grand pianos and both pianos are considered "the very finest and expensive pianos that cater and administer to artists and the professions. Thus, the products are virtually identical and compete on a direct basis. . ACTUAL CONFUSION. o The court affirmed the lower court's ruling in favor of the defendant that piano buyers would be misled in their "initial interest" in the two piano brands; "a potential Steinway buyer may satisfy himself that the less expensive Grotrian- Steinweg is at least as good, if not better, than a Steinway o Misled into an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian-Steinweg is at least as good, if not better, than a Steinway. Deception and confusion thus work to appropriate defendant's good will. This confusion, or mistaken beliefs as to the companies' interrelationships, can destroy the value of the trademark which is intended to point to only one company. o Thus, the mere fact that purchasers may be sophisticated or discriminating is not sufficient to preclude the likelihood of confusion. "'Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when the marks are as similar as those here in issue, and cover merchandise in the same general field. Even a discriminating purchaser might well assume that the marks in issue were trademarks on companion products of a single producer.
25. Brookfield Communications, Inc. v. West Coast Entertainment CORPORATION, 174 F.3d 1036 (9th Cir. 1999). - Miggy Brookfield Communications v West Coast Entertainment Brookfield gathers and sells information about the entertainment industry. (Think IMDB) Brookfield initially offered software applications featuring information such as recent film submissions, industry credits, professional contacts, and future projects targeted Major Hollywood Stuidios. Its consumer market with computer software featuring a searchable database containing entertainment-industry related information marketed under the "MovieBuff" mark around December 1993. 1996, tried to buy the domain name moviebuff.com but it was already bought by westcoast. Bought the domain names brookfieldcomm.com and moviebuffonline.com sold the software and offered subscribers access to database online. 1997, applied with the Patent and Trademark Office for a trademark for MovieBuff covering computer software 1998, Brookfield learned that West Coast intended to use moviebuff.com to provide an online database similar to the MovieBuff softaware. Brookfield wrote a letter to WestCoast to cease and desist with the complaint attached, but westcoast went ahead hence a complaint was filed. Brookfield filed a complaint of unfair competition and trademark infringement on the use of moviebuff.com to give a service similar to that of MovieBuff the software. West Coast claims to be the Senior User, as it had used its federally registered trademark, The Movie Buffs Movie Store since 1986, and that their use of moviebuff.com would not cause a likelihood of confusion with brookfields trademark. Issue: W/N West Coast is guilty of trademark infringement and unfair competition? The standard test of ownership is priority of use. To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services. The first to use a mark is deemed the "senior" user and has the right to enjoin "junior" users from using confusingly similar marks in the same industry and market or within the senior user's natural zone of expansion. Thus, to prove that there has been trademark infringement and unfair competition on the part of West Coast, Brookfield needs to prove two requisites 1) Prior Use on his part 2) That use moviebuff.com is likely to cause confusion. Prior Use Brookfield: They started using MovieBuff in 1993 while West Coast merely registered the use in 1996. WestCoast: the Movie Buffs Movie Store constituted use of moviebuff.com hence he should be considered the prior user. They started using moviebuff.com before Brookfield started selling the product MovieBuff in the internet. A trademark owner to claim priority in a mark based on the first use date of a similar, but technically distinct, mark--but only in the exceptionally narrow instance where "the previously used mark is 'the legal equivalent of the mark in question or indistinguishable therefrom. This constructive use theory is known as "tacking," as the trademark holder essentially seeks to "tack" his first use date in the earlier mark onto the subsequent mark. However, criteria for tacking is strict "The marks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked." Court ruled that West Coast cannot tack the date of use of The Movie Buffs Movie Store on moviebuff.com It was very different, 3 less words on the domain name. Situation: Movie Buffs Movie Store (West Coast)-> MovieBuff (Brookfield) -> moviebuff.com (West Coast), Court held that Movie Buffs Movie Store was not confusingly similar to MovieBuff as to West Coasts own admission. The court found that Brookfield's use of "MovieBuff" as a service mark preceded West Coast's use. The Lanham Act grants trademark protection only to marks that are used to identify and to distinguish goods or services in commerce--which typically occurs when a mark is used in conjunction with the actual sale of goods or services. (1) on goods when(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. The court found that the earliest use of moviebuff.com by westcoast was their announcement that they would be launching an online database on 1998. As prior to that their only use of moviebuff.com was in email correspondence. This did not meet the requirement that the mark must be used in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark. As their use was merely for private correspondence. It was not disputed that Brookfield started the online database of MovieBuff in 1997. Prior to the release of the website. Likelihood of Confusion Eight factor test: Similarity of Mark Trial Court orginialy found that moviebuff.com was different from moviebuffonline.com. However the court here said that it was wrong of the trial court to compare the domain name. The alleged infringing mark (moviebuff.com) should be compared with the registered trademark (MovieBuff). Sound, Sight and Meaning -> Similar. Relatedness of the Product Trial Court found that they were not competitors because Brookfield provides information while WestCoast rents and sells movies. However, both companies offer products and services relating to the entertainment industry generally, and their principal lines of business both relate to movies specifically. They are competitors as both offer searchable database. Marketing West Coast and Brookfield both utilize the Web as a marketing and advertising facility, a factor that courts have consistently recognized as exacerbating the likelihood of confusion. Both companies, apparently recognizing the rapidly growing importance of Web commerce, are maneuvering to attract customers via the Web. Not only do they compete for the patronage of an overlapping audience on the Web, both "MovieBuff" and "moviebuff.com" are utilized in conjunction with Web-based products. In the Internet context, in particular, entering a web site takes little effort--usually one click from a linked site or a search engine's list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership. Strength of the Mark - The factors that we have considered so far--the similarity of marks, the relatedness of product offerings, and the overlap in marketing and advertising channels--lead us to the tentative conclusion that Brookfield has made a strong showing of likelihood of confusion. Because the products involved are closely related and West Coast's domain name is nearly identical to Brookfield's trademark, the strength of the mark is of diminished importance in the likelihood of confusion analysis Intent - West Coast's intent does not appear to bear upon the likelihood of confusion because it did not act with such an intent from which it is appropriate to infer consumer confusion. Actual confusion - is not relevant because Brookfield filed suit before West Coast began actively using the "moviebuff.com" mark and thus never had the opportunity to collect information on actual confusion. The likelihood of expansion - in product lines factor is relatively unimportant where two companies already compete to a significant extent. Purchaser Care - The complexity in this case arises because we must consider both entertainment professionals, who probably will take the time and effort to find the specific product they want, and movie devotees, who will be more easily confused as to the source of the database offered at West Coast's web site. In addition, West Coast's site is likely to be visited by many casual movie watchers. The entertainment professional, movie devotee, and casual watcher are likely to exercise high, little, and very little care, respectively. We need not, however, decide this question now because the purchaser confusion factor, even considered in the light most favorable to West Coast, is not sufficient to overcome the likelihood of confusion strongly established by the other factors we have analyzed. In light of the foregoing analysis, we conclude that Brookfield has demonstrated a likelihood of success on its claim that West Coast's use of "moviebuff.com" violates the Lanham Act. 3. On the Use of Metatags (codes embedded in the website, or repeated use of a word in the website, so that it will pop up in a search engine.) - Nevertheless, West Coast's use of "moviebuff.com" in metatags will still result in what is known as initial interest confusion. Web surfers looking for Brookfield's "MovieBuff" products who are taken by a search engine to "westcoastvideo.com" will find a database similar enough to "MovieBuff" such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead which is actionable in the Lanham Act. FAIR USE: We agree that West Coast can legitimately use an appropriate descriptive term in its metatags. But "MovieBuff" is not such a descriptive term. Even though it differs from "Movie Buff" by only a single space, that difference is pivotal. The term "Movie Buff" is a descriptive term, which is routinely used in the English language to describe a movie devotee. In light of the fact that it is not a word in the English language, when the term "MovieBuff" is employed, it is used to refer to Brookfield's products and services, rather than to mean "motion picture enthusiast." The proper term for the "motion picture enthusiast" is "Movie Buff," which West Coast certainly can use. It cannot, however, omit the space.
26. Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987). - Mars Mobil Oil vs. Pegasus Petroleum (1987) Concepts: Degree of Similarity, Relatedness of the Goods, Initial Interest Confusion Facts: Mobil Oil charged Pegasus Petroleum with trademark infringement and unfair competition, false designation of origin, and trademark dilution. Mobil manufactures and sells a vast array of petroleum products to industrial consumers and to the general public. Since 1931, Mobil has made extensive use of its well known "flying horse" symbol--representing Pegasus, the winged horse of Greek mythology--in connection with its petroleum business. Mobil displays this registered trademark, usually in red, but occasionally in blue, black, white, or outline form, at virtually all its gasoline service stations (usually on an illuminated disk four feet in diameter); in connection with all petroleum products sold at its service stations; in connection with the sale of a variety of its other petroleum products; on its oil tankers, barges, and other vehicles; and on its letterhead. Mobil buys and sells crude and refined petroleum products in bulk, an activity known as oil trading, to insure a continuous flow of oil to its refineries, and ultimately to its customers. Mobil does not use its flying horse symbol in connection with its oil trading business. Pegasus Petroleum, incorporated in 1981, confines its activities to oil trading, and does not sell directly to the general public. Its founder, Gregory Callimanopulos, admitted that he knew of Mobil's flying horse symbol when he picked the name, but claimed that he did not know that the symbol represented Pegasus or that Mobil used the word "Pegasus" in connection with its petroleum business. Shortly after the genesis of Pegasus Petroleum, its president of the company, sent a letter to 400-500 people in the oil trading business which used an interlocking double P as a letterhead. Pegasus Petroleum has never used a flying horse symbol and sells no products with the name "Pegasus" on them. District Court Decision: DC used the criteria in Polaroid Corp. v. Polarad Electronics Corp. There is a sufficient likelihood of confusion between [Mobil's flying horse symbol] and [Pegasus Petroleum's use of the 'Pegasus' mark] to grant [Mobil] relief under the Lanham Act." Mobil is guilty of unfair competition, false designation, and antidilution claims. Pegasus Petroleum is enjoined from further use of the mark "Pegasus" in connection with the oil industry. Issue: Whether Pegasus Petroleum infringed on Mobils registered flying horse trademark (Yes) [NB: The Court no longer considered the charges of false designation of origin and trademark dilution.] Held: The Lanham Act prohibits the use of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark" where "such use is likely to cause confusion, or to cause mistake, or to deceive." To state a claim under this section, a plaintiff must show a "likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." The Polaroid case enumerated eight factors as guide to this inquiry (whether there was confusion)(1) the strength of the plaintiff's mark: (2) the degree of similarity between the two marks; (3) the competitive proximity of the products or services; (4) the existence of actual confusion; (5) the likelihood that the plaintiff will "bridge the gap" between the two markets; (6) the defendant's good faith in adopting its mark; (7) the quality of the defendant's product; and (8) the sophistication of the purchasers. [NB: The Court used each of the factors in Polaroid in deciding this case] I. Strength of the Plaintiffs Mark Pegasus Petroleum does not dispute that the strength of Mobil's flying horse mark is "without question, and perhaps without equal." As an arbitrary mark there is nothing suggestive of the petroleum business in the flying horse symbol. II. Degree of similarity between the two marks Pegasus Petroleum: The District Court erred in finding similarity between the two marks. It blindly equated the word "Pegasus" with its pictorial representation-- Mobil's flying horse. Court: While words and their pictorial representations should not be equated as a matter of law, a district court may make such a determination as a factual matter. It is well settled that words and their pictorial representation are treated the same in determining the likelihood of confusion between two marks. A strong probability exists that prospective purchasers of defendant's product will equate or translate Mobil's symbol for "Pegasus" and vice versa. The word "Pegasus" evokes the symbol of the flying red horse and that the flying horse is associated in the mind with Mobil. In other words, the symbol of the flying horse and its name "Pegasus" are synonymous. III. Competitive Proximity of the Products or Services Pegasus Petroleum: Mobil does not use its flying horse trademark in the field of oil trading. Court: Direct competition between the products is not a prerequisite to relief. Confusion, or the likelihood of confusion, not competition, is the real test of trademark infringement." Both Mobil and Pegasus Petroleum use their marks in the petroleum industry. Competitive proximity may be found where goods are similar in use and function). Competitive proximity must be measured with reference to the first two Polaroid factors. As to strength of mark: A mark that is strong because of its fame or its uniqueness, is more likely to be remembered and more likely to be associated in the public mind with a greater breadth of products or services than is a mark that is weak. The consuming public has a tendency to associate a relatively unknown mark with one to which they have long been exposed if the [relatively unknown] mark bears any resemblance thereto". Mobil's ubiquitous presence throughout the petroleum industry further increases the likelihood that a consumer will confuse Pegasus Petroleum with Mobil. Diversification makes it more likely that a potential customer would associate the non-diversified company's services with the diversified company, even though the two companies do not actually compete. As to degree of similarity: The great similarity between the two marks entitles Mobil's mark to protection over a broader range of related products. Closely related products require less similarity to support a finding of trademark infringement. IV. Defendant's Good Faith in Adopting its Mark Pegasus Petroleum: It sent a letter of trade informing oil traders of its formation and in which it stated that it was member of the Callimanopulos group of companies. Actual and constructive notice of another company's prior registration of the mark is not necessarily indicative of bad faith, because the presumption of an exclusive right to use a registered mark extends only so far as the goods or services noted in the registration certificate. Court: Pegasus Petroleum did not innocently select its potentially confusing mark. Intentional copying gives rise to a presumption of a likelihood of confusion. Mr. Callimanopulos is obviously an educated, sophisticated man who, from his prior shipping business, was familiar with the flying horse and from his own background and education and awareness of Greek mythology could not have escaped the conclusion that the use of the word 'Pegasus' would infringe the tradename and symbol of the plaintiff. The letter referred to by Pegasus Petroleum falls far short of establishing, by itself, Pegasus Petroleum's good faith. Actual or constructive knowledge may signal bad faith. The second comer has a duty to so name and dress his product as to avoid all likelihood of consumers confusing it with the product of the first comer. Where we can perceive freedom of choice with full knowledge of a senior user's mark, we can readily read into defendant's choice of a confusingly similar mark the intent to get a free ride upon the reputation of a well-known mark. V. Existence of actual confusion Both Mobil and Pegasus Petroleum offered surveys of consumers and of members of the oil trading industry as evidence relating to the existence of actual confusion between the two marks. The district court properly admitted these surveys into evidence, despite claims of statistical imperfections by both sides, as those criticisms affected the weight accorded to the evidence rather than its admissibility. The DC judge concluded that there was "evidence of actual confusion." VI. Likelihood that the Plaintiff will "bridge the gap" between the Two Markets Pegasus Petroleum: The absence of misdirected mail and telephone calls between the parties, and the fact that Pegasus Petroleum must post a letter of credit as security during its oil trading deals while Mobil need not, prove that no actual confusion between the two firms existed. Court: The DC found a likelihood of confusion not in the fact that a third party would do business with Pegasus Petroleum believing it related to Mobil, but rather in the likelihood that Pegasus Petroleum would gain crucial credibility during the initial phases of a deal. An oil trader might listen to a cold phone call from Pegasus Petroleum--an admittedly oft used procedure in the oil trading business-- when otherwise he might not, because of the possibility that Pegasus Petroleum is related to Mobil. The DC did not examine whether Mobil would "bridge the gap" by expanding its use of the flying horse symbol into the oil trading market. Nevertheless, "sufficient likelihood of confusion may be established although likelihood of bridging the gap is not demonstrated." The absence of an intent to bridge the gap does not negate a finding of a likelihood of confusion in the market as presently constituted. The Lanham Act extends trademark protection to related goods in order to guard against numerous evils in addition to restraints on the possible expansion of the senior user's market, including consumer confusion, tarnishment of the senior user's reputation, and unjust enrichment of the infringer. VII. Quality of the Defendant's Product Pegasus Petroleum: Its product--oil--does not differ from that sold by Mobil. Court: A senior user may sue to protect his reputation even where the infringer's goods are of top quality. Even if the infringer's goods are of high quality, the victim has the right to insist that its reputation not be imperiled by another's actions. If the other user sometime in the future engaged in false advertising, or cheated customs, or employed a rude salesperson, or simply sold some shoddy merchandise, the first user of the mark would suffer because buyers would link them together through the medium of the similar marks. VIII. Sophistication of the Purchasers Even though defendant's business is transacted in large quantities only with sophisticated oil traders, there is still and nevertheless a likelihood of confusion. There exists a probability that potential purchasers would be misled into an initial interest in Pegasus Petroleum. Such initial confusion works a sufficient trademark injury. Pegasus Petroleum admits that it solicits business through telephone calls to potential customers. Pegasus Petroleum also acknowledges that "[t]rust, in the oil industry, is of paramount importance." Finally, Mobil's Oil Trading Department executive, Thomas Cory, testified that he did not undertake an investigation of a new company before initially dealing with it. Such an investigation was undertaken only prior to the culmination of a deal.
27. Coffee Partners, Inc. v. San Francisco Coffee & Roastery, G.R. 169504, March 3, 2010. Nem CONCEPT/TOPIC: TRADEMARK (INFRINGEMENT OF TRADE NAMES WITHOUT REGISTRATION; TESTS FOR CONFUSION) FACTS: Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. o It has a franchise agreement with Coffee Partners Ltd. (CPL), for a non-exclusive right to operate coffee shops in the Philippines using trademarks SAN FRANCISCO COFFEE. Respondent is a local corporation engaged in the wholesale and retail sale of coffee. o It registered the business name SAN FRANCISCO COFFEE & ROASTERY, INC. with the Department of Trade and Industry (DTI) in June 1995 and had since built a customer base that included Figaro Company, among others o In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc. (BCCPI). In June 2001, respondent discovered that petitioner was about to open a coffee shop under the name SAN FRANCISCO COFFEE in Libis, Quezon City and thus sent a letter to petitioner demanding that the latter stop using the name SAN FRANCISCO COFFEE. Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition with claims for damages The BLA-IPO ruled in favor of respondent. It held that the right to the exclusive use of a trade name with freedom from infringement by similarity is determined from priority of adoption. Since respondent registered its business name with the DTI in 1995 and petitioner registered its trademark with the IPO in 2001 in the Philippines and in 1997 in other countries, then respondent must be protected from infringement of its trade name. The Office of the Director General Intellectual Property Office (ODG-IPO) reversed the BLA-IPO. It ruled that: o Respondent had stopped using its trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001 when it opened its first coffee shop in Libis, Quezon City. o Between a subsequent user of a trade name in good faith and a prior user who had stopped using such trade name, it would be inequitable to rule in favor of the latter. The Court of Appeals reversed the ODG-IPO decision and reinstated the decision of the BLA-IPO finding infringement.
ISSUE/HELD: Whether petitioners use of the trademark SAN FRANCISCO COFFEE constitutes infringement of respondents trade name SAN FRANCISCO COFFEE & ROASTERY, INC., even if such is not registered with the IPO YES
PETITIONERS ARGUMENTS: When a trade name is not registered, a suit for infringement is not available. Respondent has abandoned its trade name and failure to continue the use of its trade name to designate its goods negates any allegation of infringement. No confusion is likely to occur between its trademark and respondents trade name because of a wide divergence in the channels of trade, petitioner serving ready-made coffee while respondent is in wholesale blending, roasting, and distribution of coffee. The proper noun "San Francisco" and the generic word "coffee" are not capable of exclusive appropriation.
RESPONDENTS ARGUMENTS: RA 8293 dispensed with registration of a trade name with the IPO as a requirement for the filing of an action for infringement. All that is required is that the trade name is previously used in trade or commerce in the Philippines. It never abandoned the use of its trade name as evidenced by its letter to petitioner demanding immediate discontinuation of the use of its trademark and by the filing of the infringement case. Petitioners trademark is confusingly similar to respondents trade name. Ordinarily prudent consumers are likely to be misled about the source, affiliation, or sponsorship of petitioners coffee
RULING: In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what constitutes infringement of an unregistered trade name, thus: o The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered; o The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer; o The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services; o The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and o It is without the consent of the trademark or trade name owner or the assignee thereof. Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines. Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or without registration with the IPO, against any unlawful act including any subsequent use of the trade name by a third party, whether as a trade name or a trademark likely to mislead the public. In determining similarity and likelihood of confusion, our jurisprudence has developed two tests: the dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception, thus constituting infringement. If the competing trademark contains the main, essential, and dominant features of another, and confusion or deception is likely to result, infringement occurs. Exact duplication or imitation is not required. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers The holistic test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether one is confusingly similar to the other. Applying either the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant features of respondents trade name. Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another corporation. Geographic or generic words are not, per se, subject to exclusive appropriation. It is only the combination of the words "SAN FRANCISCO COFFEE," which is respondents trade name in its coffee business, that is protected against infringement on matters related to the coffee business to avoid confusing or deceiving the public.
28. Roma Drug v. RTC Pampanga, G.R. 149907, 16 April 2009 Elle Topic: Patents, re medicines
A team of NBI operatives and BFAD inspectors conducted a raid on petitioner, a drug store and a duly registered sole proprietorship of petitioner Rodriguez. Several imported medicines were seized, which were imported directly from Smithkline, the manufacturer abroad, and not purchased through the local one. Thus the NBI filed a complaint against Rodriguez for violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No. 8203, also known as the Special Law on Counterfeit Drugs (SLCD), with the Office of the Provincial Prosecutor in San Fernando, Pampanga. This prohibits the sale of counterfeit drugs, which under Section 3(b)(3), includes an unregistered imported drug product. The term unregistered signifies the lack of registration with the Bureau of Patent, Trademark and Technology Transfer of a trademark, tradename or other identification mark of a drug in the name of a natural or juridical person, the process of which is governed under Part III of the Intellectual Property Code. Note: here, the classification as counterfeit is based solely on the fact that they were imported from abroad and not purchased from the Philippine-registered owner of the patent or trademark of the drugs. The prosecutor recommended that Rodriguez be charged of violation of Section 4(a) of the SLCD. Thus: this petition for prohibition asking for the prosecutor to desist, and to declare the SLCD unconstitutional.
WON the SLCD is constitutional. MOOT QUESTION! BUT: IF DECIDED, IN DOUBT.
Petitioner: contrary to equal protection clause, Section 11, Article XIII, which mandates that the State make essential goods, health and other social services available to all the people at affordable cost; and Section 15, Article II, which states that it is the policy of the State to protect and promote the right to health of the people and instill health consciousness among them.
Respondent: the SLCD is presumed constitutional, Sections 11 and 15 are not self-executory. Also: the question is one of policy wisdom of the law that is, beyond the interference of the judiciary.
I. Mooted by RA 9502, the Universally Accessible Cheaper and Quality Medicines Act of 2008.
Section 7 amends Section 72 of the IPC, in that third persons are now granted the unequivocal right to import drugs or medicines whose patent were registered in the Phils by the owner of the product: Sec. 72. Limitations of Patent Rights. The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances xxx o 72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market: Provided, That, with regard to drugs and medicines, the limitation on patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorized to use the inventi on: Provided, further, That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party; This is repeated in the IRR (2008), Rule 9(i). While RA 9502 didnt expressly repeal any provision of the SLCD, the latters classification of unregistered imported drugs as counterfeit drugs, and of corresponding criminal penalties are irreconcilable with Rep. Act No. 9502 since the latter grants private third persons the unqualified right to import or otherwise use such drug.
II. Re constitutionality of the SLCD. The provisions would have been placed in doubt. The law makes a criminal of any person who imports an unregistered drug regardless of the purpose, even if the medicine can spell life or death for someone in the Philippines. It does not accommodate the situation where the drug is out of stock in the Philippines, beyond the reach of a patient who urgently depends on it. It discriminates, at the expense of health, against poor Filipinos without means to travel abroad to purchase less expensive medicines in favor of their wealthier brethren able to do so. The absurd results from this far-reaching ban extends to implications that deny the basic decencies of humanity. Even worse is the fact that the law equates the importers of such drugs, many of whom motivated to do so out of altruism or basic human love, with the malevolents who would alter or counterfeit pharmaceutical drugs for reasons of profit at the expense of public safety. Note: special law thus malum prohibitum. For a law that is intended to help save lives, the SLCD has revealed itself as a heartless, soulless legislative piece. Partly granted. 29. ABS-CBN v. Phil. Multi-media, G.R. No. 175769-70, January 19, 2009 - Nem
CONCEPT/TOPIC: COPYRIGHT (LIMITATIONS; FAIR USE)
FACTS: Philippine Multi-Media System, Inc. (PMSI), operator of Dream Broadcasting System, delivers a digital direct-to- home (DTH) television satellite to its subscribers all over the Philippines It offered as part of its program line-up, together with other paid premium program channels, ABS-CBN Channels 2 and 23, NBN, ABC, GMA, RPN, and IBC. ABS-CBN which also had regional TV stations, demanded PMSI to cease and desist from rebroadcasting Channels 2 and 23. PMSI contended that the rebroadcasting was in accordance with the authority granted by NTC under its obligations under NTC Memorandum Circular 4-08-88, Section 6.2 of which requires all cable television system operators operating in a community within Grade A or B contours to carry the television signals of the authorized television broadcast stations (must-carry rule). The parties tried to settle but negotiations were terminated by ABS-CBN allegedly due to PMSIs inability to ensure the prevention of illegal retransmission and further rebroadcast of its signals, as well as the adverse effect of the rebroadcasts on the business operations of its regional TV stations. ABS-CBN thus filed a complaint with the Intellectual Property Rights Office (IPO) alleging that PMSIs unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright. The Bureau of Legal Affairs of the IPO rendered a decision finding that PMSI infringed the broadcasting rights and copyright of ABS-CBN and ordering it to permanently cease and desist from rebroadcasting Channels 2 and 23. Upon appeal, the Director-General of the IPO rendered a decision in favor of PMSI. ABS-CBN filed a petition for review with the CA but said court upheld the findings of the Director-General ISSUE/HELD: Whether or not PMSI violated the Laws on Property Rights. NO
PETITIONERS ARGUMENTS: PMSIs unauthorized rebroadcasting of Channels 2 and 23 is an infringement of its broadcasting rights and copyright under the Intellectual Property Code (IP Code) Memorandum Circular No. 04-08-88 excludes DTH satellite television operators Court of Appeals interpretation of the must-carry rule violates Section 9 of Article III19 of the Constitution because it allows the taking of property for public use without payment of just compensation RESPONDENTS ARGUMENTS: PMSIs rebroadcasting of Channels 2 and 23 is sanctioned by Memorandum Circular No. 04-08-88 The must-carry rule under the Memorandum Circular is a valid exercise of police power
RULING: PMSI did not violate the Laws on Property Rights because it is not engaged in rebroadcasting Channels 2 and 23. Section 202.7 of the IP Code defines broadcasting as the transmission by wireless means for the public reception of sounds or of images or of representations thereof; such transmission by satellite is also broadcasting where the means for decrypting are provided to the public by the broadcasting organization or with its consent. On the other hand, rebroadcasting as defined in Article 3(g) of the 1961 Rome Convention is the simultaneous broadcasting by one broadcasting organization of the broadcast of another broadcasting organization. PMSI is only engaged in the carrying of signals of ABS-CBN coming from ABS-CBN and transmitting signals. PMSI is not the origin nor does it claim to be the origin of the programs broadcasted by the ABS-CBN. PMSI did not make and transmit on its own but merely carried the existing signals of the ABS-CBN. When PMSI subscribers view ABS- CBNs programs in Channels 2 and 23, they know that the origin thereof was the ABS-CBN. PMSIs services are similar to a cable television system because the services it renders fall under cable retransmission, While the Rome Convention gives broadcasting organizations the right to authorize or prohibit the rebroadcasting of its broadcast, however, this protection does not extend to cable retransmission. The retransmission of ABS-CBNs signals by PMSI which functions essentially as a cable television does not therefore constitute rebroadcasting in violation of the formers intellectual property rights under the IP Code. It must be emphasized that the law on copyright is not absolute. Sec. 184.1(h) of the IP Code provides that the use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use, shall not constitute infringement of copyright The carriage of ABS-CBNs signals by virtue of the must- carry rule in Memorandum Circular No. 04-08-88 is under the direction and control of the government though the NTC which is vested with exclusive jurisdiction to supervise, regulate and control telecommunications and broadcast services/facilities in the Philippines. The imposition of the must-carry rule is within the NTCs power to promulgate rules and regulations, as public safety and interest may require, to encourage a larger and more effective use of communications, radio and television broadcasting facilities, and to maintain effective competition among private entities Court did not rule on constitutionality of Memorandum Circular No. 04-08-88 as it was not necessary in the disposition of the case