04 November 1992; Melo, J. Digest prepared by Dianne Cadorna I. Facts 1. Private respondent Co Beng Kay (CBK) filed with the Director of Patents an application to register the trademark BRUTE for the briefs manufactured and sold by his Corporation in the domestic market. 2. Petitioner Faberge opposed this application on the ground of the similarity of the said trademark with Faberges own symbol BRUT, which it previously registered for after shave lotion, shaving cream, deodorant, talcum powder, and toilet soap, likewise sold in the domestic market. 3. The Director of Patents granted CBKs application. 4. The CA initially reversed this decision, holding that the marks BRUT and BRUTE were indeed quite similar, and that even if the products sold under these marks are different, it is still reasonable to believe that the similarity would cause confusion and even mistake and deception in the buying public as to the origin of the goods bearing such trademarks, especially since modern department stores usually place CBKs products (briefs) and Faberges products (after shave lotion, etc.) in one section denominated as Mens Accessories. In effect, this would supposedly allow CBK to unjustly benefit from the goodwill and reputation that Faberge has already established for its BRUT products. 5. Upon CBKs MR however, the CA reversed its earlier ruling, holding that the controlling ruling is to the effect that the identical trademark can be used by different manufacturers for products that are non-competing and unrelated. 6. Thus, Faberge is now before the SC to contest the above ruling, insisting that there can be unfair competition even if the goods are noncompeting, especially in view of the alleged repeal of RA 166 by RA 666, which deleted the phrase in the former law that the merchandise must be substantially of the same descriptive properties. It also adds that it has a pending application of the trademark BRUT 33 DEVICE for briefs as proof that it intended to expand its mark "BRUT" to other goods and thus, following the sentiment expressed by Justice JBL Reyes in Sta. Ana v. Maliwat, it is entitled to relief that is available where the junior user's goods are not remote from any product that the senior user would be likely to make or sell. II. Issues WON an earlier registration of a trademark can prevent a later registration of a similarly-sounding trademark, even if the products falling under the two are unrelated and non-competing NO. III. Holding Petition denied. Decision of the CA is affirmed. IV. Ratio 1/3
1. A review of the relevant provision of the Civil Code and RA 166, as
amended would yield the conclusion that CBK may be permitted to register the trademark BRUTE for briefs produced by it notwithstanding Faberges vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. 2. In as much as Faberge has not ventured in the production of briefs, an item which is not listed in its certificate of registration, it cannot and should not be allowed to feign that CBK had invaded its exclusive domain. Even its alleged application for registration of BRUT to other products such as briefs was not annexed to its brief, and in any case, such application does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. 3. The certificate of registration issued by the Director of Patents can confer upon Faberge the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations stated therein. 4. WRT argument raised by Faberge as regards its alleged business expansion, which invokes the wisdom imparted by Justice JBL Reyes in Sta. Ana vs. Maliwat to the effect that dissimilarity of goods will not preclude relief if the junior user's goods are not remote from any other product which the first user would be likely to make or sell, it is indeed true that Sec. 4(d) of RA 166, as amended does not require that the articles of manufacture of the previous user and late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar the latter from registering his mark in the principal register. 5. Yet, it is equally true that under Sec. 20 of the same law, the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration. 6. How should this apparent conflict between Sec. 4(d) and Sec. 20 be reconciled? The rule has been laid down that the clause which comes later shall be given paramount significance over an anterior proviso upon the presumption that it expresses the latest and dominant purpose. It ineluctably follows that Sec. 20 is controlling and, therefore, CBK can appropriate its symbol for the briefs it manufactures because as aptly remarked by Justice Sanchez in Sterling Products v. Farbenfabriken: Really, if the certificate of registration were to be deemed as including goods not specified therein, then a situation may arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had never intended to use the trademark for the said goods. We believe that such omnibus registration is not contemplated by our Trademark Law. 7. Whatever deleterious effects may arise from the above interpretation of Sec. 20 in relation to Sec. 4(d) of RA 166 is not entirely irreversible; however the remedy is legislative and not judicial.
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8. Neither can CBK be deemed to have committed infringement, which is
defined as the use without consent of the trademark owner of 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. 9. The glaring discrepancies between the products of CBK, on the one hand, and of Faberge, on the other, had been amply portrayed to such an extent that indeed, a purchaser who is out in the market for the purpose of buying CBKs BRUTE brief would definitely be not mistaken or misled into buying Faberges BRUT after shave lotion or deodorant.