1. Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc. G.R. No.

169504,
March 3, 2010

Facts:
The petitioner holds a business in maintaining coffee shops in the Philippines. It is registered
with the Securities and Exchange Commission in January 2001. In its franchise agreement
with Coffee Partners Ltd, it carries the trademark San Francisco Coffee. Respondent is
engaged in the wholesale and retail sale of coffee that was registered in SEC in May 1995
under a registered business name of San Francisco Coffee & Roastery, Inc. It entered into
a joint venture with Boyd Coffee USA to study coffee carts in malls.

When respondent learned that petitioner will open a coffee shop in Libis, Q.C. they sent a
letter to the petitioner demanding them to stop using the name San Francisco Coffee as
it causes confusion to the minds of the public. A complaint was also filed by respondents
before the Bureau of Legal Affairs of the Intellectual Property Office for infringement and
unfair competition with claims for damages.

Petitioners contend that there are distinct differences in the appearance of their trademark
and that respondent abandoned the use of their trademark when it joint venture with
Boyd Coffee USA. The Bureau of Legal Affairs of the IPO held that petitioners trademark
infringed on the respondents trade name as it registered its business name first with the
DTI in 1995 while petitioner only registered its trademark in 2001.



Furthermore, it ruled that the respondent did not abandon the use of its trade name upon
its joint venture with Boyd Coffee USA since in order for abandonment to exist it must
be permanent, intentional and voluntary. It also held that petitioners use of the
trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of the exact
similarity in sound, spelling, pronunciation, and commercial impression of the words "SAN
FRANCISCO" which is the dominant portion of respondents trade name and petitioners
trademark.

Upon appeal before the office of the Director General of the IPO, the decision of its legal
affairs was reversed declaring there was no infringement. The Court of Appeals however set
aside its decision and reinstated the IPO legal affairs decision. Petitioner contends that the
respondents trade name is not registered therefore a suit for infringement is not
available.

Issue:
Whether or not the petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes
infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.,"
even if the trade name is not registered with the Intellectual Property Office (IPO).

Ruling:
YES!

Registration of a trademark before the IPO is no longer a requirement to file an action for
infringement as provided in Section 165.2 of RA 8293. All that is required is that the
trade name is previously used in trade or commerce in the Philippines. There is no showing
that respondent abandoned the use of its trade name as it continues to embark to
conduct research on retailing coffee, import and sell coffee machines as among the services
for which the use of the business name has been registered.

The court also laid down two tests to determine similarity and likelihood of confusion. The
dominancy test focuses on similarity of the prevalent features of the trademarks that could
cause deception and confusion that constitutes infringement. 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.
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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. And because both are involved in coffee business
there is always the high chance that the public will get confused of the source of
the coffee sold by the petitioner. Respondent has acquired an exclusive right to the use
of the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the registration of
the business name with the DTI in 1995.

In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down
what constitutes infringement of an unregistered trade name, thus:
The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered. The trademark or trade name
is reproduced, counterfeited, copied, or colorably imitated by the infringer;
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;
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 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.