G.R. No.

112012

April 4, 2001

(which cannot be exclusively appropriated by any person for being a descriptive

or generic name), the other words that are used respectively with said word in

SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES,

the three trademarks are very different from each other in meaning, spelling,

INC., petitioners,

pronunciation, and sound". CFC further argued that its trademark, FLAVOR

vs.

MASTER, "is clearly very different from any of Nestles alleged trademarks

COURT OF APPEALS and CFC CORPORATION., respondents.

MASTER ROAST and MASTER BLEND, especially when the marks are viewed in
their entirety, by considering their pictorial representations, color schemes and

YNARES-SANTIAGO, J.:

the letters of their respective labels."

This is a petition for review assailing the Decision of the Court of Appeals in CA-

In its Decision No. 90-47 dated December 27, 1990, the BPTTT denied CFCs

G.R. SP No. 24101, reversing and setting aside the decision of the Bureau of
2

Patents, Trademarks and Technology Transfer (BPTTT), which denied private

application for registration.5 CFC elevated the matter to the Court of Appeals,
where it was docketed as CA-G.R. SP No. 24101.

respondents application for registration of the trade-mark, FLAVOR MASTER.

The Court of Appeals defined the issue thus: "Does appellant CFCs trade dress
On January 18, 1984, private respondent CFC Corporation filed with the BPTTT

bear a striking resemblance with appellees trademarks as to create in the

an application for the registration of the trademark "FLAVOR MASTER" for

purchasing publics mind the mistaken impression that both coffee products

instant coffee, under Serial No. 52994. The application, as a matter of due

come from one and the same source?"

course, was published in the July 18, 1988 issue of the BPTTTs Official Gazette.
As stated above, the Court of Appeals, in the assailed decision dated September
Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under

23, 1993, reversed Decision No. 90-47 of the BPTTT and ordered the Director

Swiss laws and domiciled in Switzerland, filed an unverified Notice of

of Patents to approve CFCs application. The Court of Appeals ruled:

Opposition,3 claiming that the trademark of private respondents product is

"confusingly similar to its trademarks for coffee and coffee extracts, to wit:

Were We to take even a lackadaisical glance at the overall appearance

MASTER ROAST and MASTER BLEND."

of the contending marks, the physical discrepancies between appellant

CFCs and appellees respective logos are so ostensible that the casual

Likewise, a verified Notice of Opposition was filed by Nestle Philippines, Inc., a

purchaser cannot likely mistake one for the other. Appellant CFCs label

Philippine corporation and a licensee of Societe Des Produits Nestle S.A., against

(Exhibit "4") is predominantly a blend of dark and lighter shade of

CFCs application for registration of the trademark FLAVOR MASTER. Nestle

orange where the words "FLAVOR MASTER", "FLAVOR" appearing on

claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its

top of "MASTER", shaded in mocha with thin white inner and outer

registration would likely cause confusion in the trade; or deceive purchasers and

sidings per letter and identically lettered except for the slightly

would falsely suggest to the purchasing public a connection in the business of

protruding bottom curve of the letter "S" adjoining the bottom tip of

Nestle, as the dominant word present in the three (3) trademarks is "MASTER";

the letter "A" in the word "MASTER", are printed across the top of a

or that the goods of CFC might be mistaken as having originated from the latter.

simmering red coffee cup. Underneath "FLAVOR MASTER" appears

"Premium Instant Coffee" printed in white, slim and slanted letters.

In answer to the two oppositions, CFC argued that its trademark, FLAVOR

Appellees "MASTER ROAST" label (Exhibit "7"), however, is almost

MASTER, is not confusingly similar with the formers trademarks, MASTER

double the width of appellant CFCs. At the top is printed in brown color

ROAST and MASTER BLEND, alleging that, "except for the word MASTER

the word "NESCAFE" against a white backdrop. Occupying the center is

a square-shaped configuration shaded with dark brown and picturing a

2. RESPONDENT COURT ERRED IN FINDING THAT APPELLANT

heap of coffee beans, where the word "MASTER" is inscribed in the

CFCS TRADE DRESS IS BEYOND THE SCOPE OF THE

middle. "MASTER" in appellees label is printed in taller capital letters,

PROSCRIPTION LAID DOWN BY JURISPRUDENCE AND THE

with the letter "M" further capitalized. The letters are shaded with red

TRADEMARK LAW.

and bounded with thin gold-colored inner and outer sidings. Just above
the word "MASTER" is a red window like portrait of what appears to be

3. RESPONDENT COURT ERRED IN HOLDING THAT THE TOTALITY

a coffee shrub clad in gold. Below the "MASTER" appears the word

RULE, RATHER THAN THE TEST OF DOMINANCY, APPLIES TO THE

"ROAST" impressed in smaller, white print. And further below are the

CASE.

inscriptions in white: "A selection of prime Arabica and Robusta coffee."

With regard to appellees "MASTER BLEND" label (Exhibit "6") of which

4. RESPONDENT COURT ERRED IN INVOKING THE TOTALITY RULE

only a xeroxed copy is submitted, the letters are bolder and taller as

APPLIED IN THE CASES OF BRISTOL MYERS V. DIRECTOR OF

compared to appellant CFCs and the word "MASTER" appears on top of

PATENTS, ET AL. (17 SCRA 128), MEAD JOHNSON & CO. V. NVJ VAN

the word "BLEND" and below it are the words "100% pure instant

DORF LTD., (7 SCRA 768) AND AMERICAN CYANAMID CO. V.

coffee" printed in small letters.

DIRECTOR OF PATENTS (76 SCRA 568).

From the foregoing description, while the contending marks depict the

The petition is impressed with merit.

same product, the glaring dissimilarities in their presentation far

outweigh and dispel any aspect of similitude. To borrow the words of the

A trademark has been generally defined as "any word, name, symbol or device

Supreme Court in American Cyanamid Co. v. Director of Patents (76

adopted and used by a manufacturer or merchant to identify his goods and

SCRA 568), appellant CFCs and appellees labels are entirely different in

distinguish them from those manufactured and sold by others." 7

size, background, colors, contents and pictorial arrangement; in short,

the general appearances of the labels bearing the respective
trademarks are so distinct from each other that appellees cannot assert
that the dominant features, if any, of its trademarks were used or
appropriated in appellant CFCs own. The distinctions are so well-defined
so as to foreclose any probability or likelihood of confusion or deception
on the part of the normally intelligent buyer when he or she encounters
both coffee products at the grocery shelf. The answer therefore to the
query is a clear-cut NO.

Petitioners are now before this Court on the following assignment of errors:

A manufacturers trademark is entitled to protection. As Mr. Justice

Frankfurter observed in the case of Mishawaka Mfg. Co. v. Kresge Co.:8
The protection of trade-marks is the laws recognition of the
psychological function of symbols. If it is true that we live by symbols,
it is no less true that we purchase goods by them. A trade-mark is a
merchandising short-cut which induces a purchaser to select what he
wants, or what he has been led to believe he wants. The owner of a mark
exploits this human propensity by making every effort to impregnate
the atmosphere of the market with the drawing power of a congenial
symbol. Whatever the means employed, the aim is the same --- to convey

1. RESPONDENT COURT GRAVELY ERRED IN REVERSING AND

through the mark, in the minds of potential customers, the desirability

SETTING ASIDE THE DECISION (NO. 90-47) OF THE DIRECTOR OF

of the commodity upon which it appears. Once this is attained, the

THE BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY

trade-mark owner has something of value. If another poaches upon the

TRANSFER (BPTTT) DATED DECEMBER 27, 1990.

commercial magnetism of the symbol he has created, the owner can

obtain legal redress.

Section 4 (d) of Republic Act No. 166 or the Trademark Law, as amended, which

an ordinary purchaser giving such attention as a purchaser usually gives, as to

was in force at the time, provides thus:

cause him to purchase the one supposing it to be the other. 9 In determining if

colorable imitation exists, jurisprudence has developed two kinds of tests - the

Registration of trade-marks, trade-names and service-marks on the

Dominancy Test and the Holistic Test.10 The test of dominancy focuses on the

principal register. - There is hereby established a register of trade-

similarity of the prevalent features of the competing trademarks which might

marks, trade-names and service marks which shall be known as the

cause confusion or deception and thus constitute infringement. On the other side

principal register. The owner of a trade-mark, trade-name or service-

of the spectrum, the holistic test mandates that the entirety of the marks in

mark used to distinguish his goods, business or services from the goods,

question must be considered in determining confusing similarity. 11

business or services of others shall have the right to register the same
on the principal register, unless it:
xxx

xxx

xxx

In the case at bar, the Court of Appeals held that:

The determination of whether two trademarks are indeed confusingly
similar must be taken from the viewpoint of the ordinary purchasers

(d) Consists of or comprises a mark or trade-name which so resembles a

who are, in general, undiscerningly rash in buying the more common and

mark or trade-name registered in the Philippines or a mark or trade-

less expensive household products like coffee, and are therefore less

name previously used in the Philippines by another and not abandoned, as

inclined to closely examine specific details of similarities and

to be likely, when applied to or used in connection with the goods,

dissimilarities between competing products. The Supreme Court in Del

business or services of the applicant,to cause confusion or mistake or to

Monte Corporation v. CA, 181 SCRA 410, held that:

deceive purchasers;
"The question is not whether the two articles are
xxx

xxx

xxx

distinguishable by their labels when set side by side but

whether the general confusion made by the article upon the eye

(Emphasis supplied)

of the casual purchaser who is unsuspicious and off his guard, is

such as to likely result in his confounding it with the original. As

The law prescribes a more stringent standard in that there should not only be

observed in several cases, the general impression of the

confusing similarity but that it should not likely cause confusion or mistake or

ordinary purchaser, buying under the normally prevalent

deceive purchasers.

conditions in trade and giving the attention such purchasers

usually give in buying that class of goods, is the touchstone."

Hence, the question in this case is whether there is a likelihood that the
trademark FLAVOR MASTER may cause confusion or mistake or may deceive

From this perspective, the test of similarity is to consider the two

purchasers that said product is the same or is manufactured by the same

marks in their entirety, as they appear in the respective labels, in

company. In other words, the issue is whether the trademark FLAVOR MASTER

relation to the goods to which they are attached (Bristol Myers

is a colorable imitation of the trademarks MASTER ROAST and MASTER

Company v. Director of Patents, et al., 17 SCRA 128, citing Mead

BLEND.

Johnson & Co. v. NVJ Van Dorp, Ltd., et al., 7 SCRA 768). The mark must
be considered as a whole and not as dissected. If the buyer is deceived,

Colorable imitation denotes such a close or ingenious imitation as to be calculated

it is attributable to the marks as a totality, not usually to any part of it

to deceive ordinary persons, or such a resemblance to the original as to deceive

(Del Monte Corp. v. CA, supra), as what appellees would want it to be

when they essentially argue that much of the confusion springs from

In the same manner, the Court of Appeals erred in applying the totality rule as

appellant CFCs use of the word "MASTER" which appellees claim to be

defined in the cases of Bristol Myers v. Director of Patents;17 Mead Johnson &

the dominant feature of their own trademarks that captivates the

Co. v. NVJ Van Dorf Ltd.;18 and American Cyanamid Co. v. Director of

prospective consumers. Be it further emphasized that the discerning

Patents.19 The totality rule states that "the test is not simply to take their

eye of the observer must focus not only on the predominant words but

words and compare the spelling and pronunciation of said words. In determining

also on the other features appearing in both labels in order that he may

whether two trademarks are confusingly similar, the two marks in their entirety

draw his conclusion whether one is confusingly similar to the other

as they appear in the respective labels must be considered in relation to the

(Mead Johnson & Co. v. NVJ Van Dorp, Ltd., supra).12

goods to which they are attached; the discerning eye of the observer must focus
not only on the predominant words but also on the other features appearing on

The Court of Appeals applied some judicial precedents which are not on all fours

both labels."20

with this case. It must be emphasized that in infringement or trademark cases in

the Philippines, particularly in ascertaining whether one trademark is confusingly

As this Court has often declared, each case must be studied according to the

similar to or is a colorable imitation of another, no set rules can be deduced.

peculiar circumstances of each case. That is the reason why in trademark cases,

Each case must be decided on its own merits. In Esso Standard, Inc. v. Court of

jurisprudential precedents should be applied only to a case if they are

Appeals,14 we ruled that the likelihood of confusion is a relative concept; to be

specifically in point.

13

determined only according to the particular, and sometimes peculiar,

circumstances of each case. In trademark cases, even more than in any other

In the above cases cited by the Court of Appeals to justify the application of

litigation, precedent must be studied in light of the facts of the particular case.

the totality or holistic test to this instant case, the factual circumstances are

The wisdom of the likelihood of confusion test lies in its recognition that each

substantially different. In the Bristol Myers case, this Court held that although

trademark infringement case presents its own unique set of facts. Indeed, the

both BIOFERIN and BUFFERIN are primarily used for the relief of pains such

complexities attendant to an accurate assessment of likelihood of confusion

as headaches and colds, and their names are practically the same in spelling and

require that the entire panoply of elements constituting the relevant factual

pronunciation, both labels have strikingly different backgrounds and

landscape be comprehensively examined.

15

surroundings. In addition, one is dispensable only upon doctors prescription,

while the other may be purchased over-the-counter.

The Court of Appeals application of the case of Del Monte Corporation v. Court

of Appeals16 is, therefore, misplaced. In Del Monte, the issue was about the

In the Mead Johnson case, the differences between ALACTA and ALASKA are

alleged similarity of Del Montes logo with that of Sunshine Sauce Manufacturing

glaring and striking to the eye. Also, ALACTA refers to "Pharmaceutical

Industries. Both corporations market the catsup product which is an inexpensive

Preparations which Supply Nutritional Needs," falling under Class 6 of the

and common household item.

official classification of Medicines and Pharmaceutical Preparations to be used

as prescribed by physicians. On the other hand, ALASKA refers to "Foods and

Since Del Monte alleged that Sunshines logo was confusingly similar to or was a

Ingredients of Foods" falling under Class 47, and does not require medical

colorable imitation of the formers logo, there was a need to go into the details

prescription.

of the two logos as well as the shapes of the labels or marks, the brands printed
on the labels, the words or lettering on the labels or marks and the shapes and

In the American Cyanamid case, the word SULMET is distinguishable from the

colors of the labels or marks. The same criteria, however, cannot be applied in

word SULMETINE, as the former is derived from a combination of the syllables

the instant petition as the facts and circumstances herein are peculiarly

"SUL" which is derived from sulfa and "MET" from methyl, both of which are

different from those in the Del Monte case.

chemical compounds present in the article manufactured by the contending

parties. This Court held that the addition of the syllable "INE" in respondents

nor does he usually have the time to do so. The average shopper is usually in a

label is sufficient to distinguish respondents product or trademark from that of

hurry and does not inspect every product on the shelf as if he were browsing in a

petitioner. Also, both products are for medicinal veterinary use and the buyer

library.22

will be more wary of the nature of the product he is buying. In any case, both
products are not identical as SULMETs label indicates that it is used in a

The Court of Appeals held that the test to be applied should be the totality or

drinking water solution while that of SULMETINE indicates that they are

holistic test reasoning, since what is of paramount consideration is the ordinary

tablets.

purchaser who is, in general, undiscerningly rash in buying the more common and
less expensive household products like coffee, and is therefore less inclined to

It cannot also be said that the products in the above cases can be bought off

closely examine specific details of similarities and dissimilarities between

the shelf except, perhaps, for ALASKA. The said products are not the usual

competing products.

"common and inexpensive" household items which an "undiscerningly rash" buyer

would unthinkingly buy.In the case at bar, other than the fact that both Nestles

This Court cannot agree with the above reasoning. If the ordinary purchaser is

and CFCs products are inexpensive and common household items, the similarity

"undiscerningly rash" in buying such common and inexpensive household products

ends there. What is being questioned here is the use by CFC of the trademark

as instant coffee, and would therefore be "less inclined to closely examine

MASTER. In view of the difficulty of applying jurisprudential precedents to

specific details of similarities and dissimilarities" between the two competing

trademark cases due to the peculiarity of each case, judicial fora should not

products, then it would be less likely for the ordinary purchaser to notice that

readily apply a certain test or standard just because of seeming similarities. As

CFCs trademark FLAVOR MASTER carries the colors orange and mocha while

this Court has pointed above, there could be more telling differences than

that of Nestles uses red and brown. The application of the totality or holistic

similarities as to make a jurisprudential precedent inapplicable.

test is improper since the ordinary purchaser would not be inclined to notice the
specific features, similarities or dissimilarities, considering that the product is

Nestle points out that the dominancy test should have been applied to determine

an inexpensive and common household item.

whether there is a confusing similarity between CFCs FLAVOR MASTER and

Nestles MASTER ROAST and MASTER BLEND.

It must be emphasized that the products bearing the trademarks in question are
"inexpensive and common" household items bought off the shelf by

We agree.

"undiscerningly rash" purchasers. As such, if the ordinary purchaser is

"undiscerningly rash", then he would not have the time nor the inclination to

As the Court of Appeals itself has stated, "[t]he determination of whether two

make a keen and perceptive examination of the physical discrepancies in the

trademarks are indeed confusingly similar must be taken from the viewpoint of

trademarks of the products in order to exercise his choice.

the ordinary purchasers who are, in general, undiscerningly rash in buying the
more common and less expensive household products like coffee, and are

While this Court agrees with the Court of Appeals detailed enumeration of

therefore less inclined to closely examine specific details of similarities and

differences between the respective trademarks of the two coffee products,

dissimilarities between competing products."21

this Court cannot agree that totality test is the one applicable in this case.
Rather, this Court believes that the dominancy test is more suitable to this case

The basis for the Court of Appeals application of the totality or holistic test is

in light of its peculiar factual milieu.

the "ordinary purchaser" buying the product under "normally prevalent conditions
in trade" and the attention such products normally elicit from said ordinary

Moreover, the totality or holistic test is contrary to the elementary postulate of

purchaser. An ordinary purchaser or buyer does not usually make such scrutiny

the law on trademarks and unfair competition that confusing similarity is to be

determined on the basis of visual, aural, connotative comparisons and overall

the particular product is a species," or are "commonly used as the name or

impressions engendered by the marks in controversy as they are encountered in

description of a kind of goods," or "imply reference to every member of a genus

the realities of the marketplace.23 The totality or holistic test only relies on

and the exclusion of individuating characters," or "refer to the basic nature of

visual comparison between two trademarks whereas the dominancy test relies

the wares or services provided rather than to the more idiosyncratic

not only on the visual but also on the aural and connotative comparisons and

characteristics of a particular product," and are not legally protectable. On the

overall impressions between the two trademarks.

other hand, a term is descriptive26 and therefore invalid as a trademark if, as

understood in its normal and natural sense, it "forthwith conveys the

For this reason, this Court agrees with the BPTTT when it applied the test of

characteristics, functions, qualities or ingredients of a product to one who has

dominancy and held that:

never seen it and does not know what it is," or "if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of the goods," or

From the evidence at hand, it is sufficiently established that the word

if it clearly denotes what goods or services are provided in such a way that the

MASTER is the dominant feature of opposers mark. The word MASTER

consumer does not have to exercise powers of perception or imagination.

is printed across the middle portion of the label in bold letters almost
twice the size of the printed word ROAST. Further, the word MASTER

Rather, the term "MASTER" is a suggestive term brought about by the

has always been given emphasis in the TV and radio commercials and

advertising scheme of Nestle. Suggestive terms27 are those which, in the

other advertisements made in promoting the product. This can be

phraseology of one court, require "imagination, thought and perception to reach a

gleaned from the fact that Robert Jaworski and Atty. Ric Puno Jr.., the

conclusion as to the nature of the goods." Such terms, "which subtly connote

personalities engaged to promote the product, are given the titles

something about the product," are eligible for protection in the absence of

Master of the Game and Master of the Talk Show, respectively. In due

secondary meaning. While suggestive marks are capable of shedding "some light"

time, because of these advertising schemes the mind of the buying

upon certain characteristics of the goods or services in dispute, they

public had come to learn to associate the word MASTER with the

nevertheless involve "an element of incongruity," "figurativeness," or "

opposers goods.

imaginative effort on the part of the observer."

x x x. It is the observation of this Office that much of the dominance

This is evident from the advertising scheme adopted by Nestle in promoting its

which the word MASTER has acquired through Opposers advertising

coffee products. In this case, Nestle has, over time, promoted its products as

schemes is carried over when the same is incorporated into respondent-

"coffee perfection worthy of masters like Robert Jaworski and Ric Puno Jr."

applicants trademark FLAVOR MASTER. Thus, when one looks at the

label bearing the trademark FLAVOR MASTER (Exh. 4) ones attention

In associating its coffee products with the term "MASTER" and thereby

is easily attracted to the word MASTER, rather than to the

impressing them with the attributes of said term, Nestle advertised its products

dissimilarities that exist. Therefore, the possibility of confusion as to

thus:

the goods which bear the competing marks or as to the origins thereof
is not farfetched. x x x.24

Robert Jaworski. Living Legend.A true hard court hero. Fast on his feet.
Sure in every shot he makes. A master strategist.In one word,

In addition, the word "MASTER" is neither a generic nor a descriptive term. As

unmatched.

such, said term can not be invalidated as a trademark and, therefore, may be
legally protected. Generic terms25 are those which constitute "the common

MASTER ROAST.Equally unmatched.Rich and deeply satisfying.Made

descriptive name of an article or substance," or comprise the "genus of which

from a unique combination of the best coffee beans - Arabica for

superior taste and aroma, Robusta for strength and body. A masterpiece

CA-G.R. SP No. 24101 is REVERSED and SET ASIDE and the decision of the

only NESCAFE, the worlds coffee masters, can create.

Bureau of Patents, Trademarks and Technology Transfer in Inter Partes Cases

Nos. 3200 and 3202 is REINSTATED.

MASTER ROAST.Coffee perfection worthy of masters like Robert

Jaworski.28

SO ORDERED.

In the art of conversation, Ric Puno Jr. is master. Witty.Well-

In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and

informed.Confident.
In the art of coffee-making, nothing equals Master Roast, the coffee

Technology Transfers an application for the registration of its trademark

Flavor Master an instant coffee. Nestle opposed the application as it alleged

masterpiece from Nescafe, the worlds coffee masters. A unique

that Flavor Master is confusingly similar to Nestle coffee products like Master

combination of the best coffee beans - Arabica for superior taste and

Blend and Master Roast. Nestle alleged that in promoting their products, the

aroma, Robusta for strength and body. Truly distinctive and rich in

word Master has been used so frequently so much so that when one hears the

flavor.

word Master it connotes to a Nestle product. They provided as examples the

Master Roast. Coffee perfection worthy of masters like Ric Puno Jr. 29

fact that theyve been using Robert Jaworski and Ric Puno Jr. as their
commercial advertisers; and that in those commercials Jaworski is a master of

The term "MASTER", therefore, has acquired a certain connotation to mean the

basketball and that Puno is a master of talk shows; that the brand of coffee

coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As

equitable or fit to them is Master Blend and Master Roast. CFC Corporation on

such, the use by CFC of the term "MASTER" in the trademark for its coffee

the other hand alleged that the word Master is a generic and a descriptive

product FLAVOR MASTER is likely to cause confusion or mistake or even to

term, hence not subject to trademark. The Director of Patents ruled in favor of

deceive the ordinary purchasers.

In closing, it may not be amiss to quote the case of American Chicle Co. v. Topps

Chewing Gum, Inc.,30 to wit:

Why it should have chosen a mark that had long been employed by

Nestle but the Court of Appeals, using the Holistic Test, reversed the said
decision.
ISSUE: Whether or not the Court of Appeals is correct.

[plaintiff] and had become known to the trade instead of adopting some

HELD: No. The proper test that should have been used is the Dominancy Test.

other means of identifying its goods is hard to see unless there was a

The application of the totality or holistic test is improper since the ordinary

deliberate purpose to obtain some advantage from the trade that

purchaser would not be inclined to notice the specific features, similarities or

[plaintiff] had built up. Indeed, it is generally true that, as soon as we

dissimilarities, considering that the product is an inexpensive and common

see that a second comer in a market has, for no reason that he can
assign, plagiarized the "make-up" of an earlier comer, we need no more; .
. . [W]e feel bound to compel him to exercise his ingenuity in quarters
further afield.

household item. The use of the word Master by Nestle in its products and
commercials has made Nestle acquire a connotation that if its a Master product
it is a Nestle product. As such, the use by CFC of the term MASTER in the
trademark for its coffee product FLAVOR MASTER is likely to cause confusion

WHEREFORE, in view of the foregoing, the decision of the Court of Appeals in

or mistake or even to deceive the ordinary purchasers.

In addition, the word MASTER is neither a generic nor a descriptive term. As

such, said term can not be invalidated as a trademark and, therefore, may be
legally protected.
Generic terms are those which constitute the common descriptive name of an
article or substance, or comprise the genus of which the particular product is a
species, or are commonly used as the name or description of a kind of goods,
or imply reference to every member of a genus and the exclusion of
individuating characters, or refer to the basic nature of the wares or services
provided rather than to the more idiosyncratic characteristics of a particular
product, and are not legally protectable.
On the other hand, a term is descriptive and therefore invalid as a trademark if,
as understood in its normal and natural sense, it forthwith conveys the
characteristics, functions, qualities or ingredients of a product to one who has
never seen it and does not know what it is, or if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of the goods, or
if it clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination.
Rather, the term MASTER is a suggestive term brought about by the
advertising scheme of Nestle. Suggestive terms are those which, in the
phraseology of one court, require imagination, thought and perception to reach a
conclusion as to the nature of the goods. Such terms, which subtly connote
something about the product, are eligible for protection in the absence of
secondary meaning. While suggestive marks are capable of shedding some light
upon certain characteristics of the goods or services in dispute, they
nevertheless involve an element of incongruity, figurativeness, or
imaginative effort on the part of the observer.

G.R. No. 138900 September 20, 2005

The "Dockers and Design" trademark was first used in the Philippines in or about
May 1988, by LSPI, a domestic corporation engaged in the manufacture, sale and

LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., Petitioners,

distribution of various products bearing trademarks owned by LS & Co. To date,

vs.

LSPI continues to manufacture and sell Dockers Pants with the "Dockers and

CLINTON APPARELLE, INC., Respondent.

Design" trademark.10

DECISION

LS & Co. and LSPI further alleged that they discovered the presence in the local
market of jeans under the brand name "Paddocks" using a device which is

Tinga, J.:

substantially, if not exactly, similar to the "Dockers and Design" trademark

owned by and registered in the name of LS & Co., without its consent. Based on
1

Before us is a petition for review on certiorari under Rule 45 of the 1997 Rules

their information and belief, they added, Clinton Apparelle manufactured and

of Civil Procedure filed by Levi Strauss & Co. (LS & Co.) and Levi Strauss

continues to manufacture such "Paddocks" jeans and other apparel.

(Philippines), Inc. (LSPI) assailing the Court of

Appeals Decision2 andResolution3 respectively dated 21 December 1998 and 10

However, since LS & Co. and LSPI are unsure if both, or just one of impleaded

May 1999. The questioned Decision granted respondents prayer for a writ of

defendants are behind the manufacture and sale of the "Paddocks" jeans

preliminary injunction in its Petition and set aside the trial courts orders dated

complained of, they brought this suit under Section 13, Rule 3 11 of the 1997 Rules

15 May 1998 and 4 June 1998 which respectively granted petitioners prayer

of Civil Procedure.12

for the issuance of a temporary restraining order (TRO) and application for the
issuance of a writ of preliminary injunction.

The Complaint contained a prayer that reads as follows:

This case stemmed from the Complaint7 for Trademark Infringement, Injunction

1. That upon the filing of this complaint, a temporary restraining order be

and Damages filed by petitioners LS & Co. and LSPI against respondent Clinton

immediately issued restraining defendants, their officers, employees, agents,

Apparelle, Inc. (Clinton Aparelle) together with an alternative defendant,

representatives, dealers, retailers or assigns from committing the acts herein

Olympian Garments, Inc. (Olympian Garments), before the Regional Trial Court of

complained of, and, specifically, for the defendants, their officers, employees,

Quezon City, Branch 90. The Complaint was docketed as Civil Case No. Q-98-

agents, representatives, dealers and retailers or assigns, to cease and desist

34252, entitled "Levi Strauss & Co. and Levi Strauss (Phils.), Inc. v. Clinton

from manufacturing, distributing, selling, offering for sale, advertising, or

Aparelle, Inc. and/or Olympian Garments, Inc."

otherwise using denims, jeans or pants with the design herein complained of as

substantially, if not exactly similar, to plaintiffs "Dockers and Design"

The Complaint alleged that LS & Co., a foreign corporation duly organized and

trademark.

existing under the laws of the State of Delaware, U.S.A., and engaged in the
apparel business, is the owner by prior adoption and use since 1986 of the

2. That after notice and hearing, and pending trial on the merits, a writ of

internationally famous "Dockers and Design" trademark. This ownership is

preliminary injunction be issued enjoining defendants, their officers, employees,

evidenced by its valid and existing registrations in various member countries of

agents, dealers, retailers, or assigns from manufacturing, distributing, selling,

the Paris Convention. In the Philippines, it has a Certificate of Registration No.

offering for sale, advertising, jeans the design herein complained of as

46619 in the Principal Register for use of said trademark on pants, shirts,

substantially, if not exactly similar, to plaintiffs "Dockers and Design"

blouses, skirts, shorts, sweatshirts and jackets under Class 25. 9

trademark.

3. That after trial on the merits, judgment be rendered as follows:

retailers or assigns from committing the acts complained of in the verified

Complaint, and specifically, for the defendants, their officers, employees,

a. Affirming and making permanent the writ of preliminary injunction;

agents, representatives, dealers and retailers or assigns, to cease and desist

from manufacturing, distributing, selling, offering for sale, advertising or

b. Ordering that all infringing jeans in the possession of either or both

otherwise using denims, jeans or pants with the design complained of in the

defendants as the evidence may warrant, their officers, employees, agents,

verified Complaint as substantially, if not exactly similar, to plaintiffs "Dockers

retailers, dealers or assigns, be delivered to the Honorable Court of plaintiffs,

and Design" trademark; until after the application/prayer for the issuance of a

and be accordingly destroyed;13

Writ of Preliminary Injunction is heard/resolved, or until further orders from

this Court.

Acting on the prayer for the issuance of a TRO, the trial court issued
an Order14 setting it for hearing on 5 May 1998. On said date, as respondent

The hearing on the application for the issuance of a Writ of Preliminary

failed to appear despite notice and the other defendant, Olympian Garments, had

Injunction as embodied in the verified Complaint is set on May 26, 1998

yet to be notified, the hearing was re-scheduled on 14 May 1998. 15

(Tuesday) at 2:00 P.M. which setting is intransferable in character considering

that the lifetime of this Temporary Restraining Order is twenty (20) days from

On 14 May 1998, neither Clinton Apparelle nor Olympian Garments appeared.

date hereof.18

Clinton Apparelle claimed that it was not notified of such hearing. Only Olympian
Garments allegedly had been issued with summons. Despite the absence of the

On 4 June 1998, the trial court issued another Order19 granting the writ of

defendants, the hearing on the application for the issuance of a TRO continued. 16

preliminary injunction, to wit:

The following day, the trial court issued an Order17 granting the TRO applied for,

ORDER

the pertinent portions of which state:

This resolves the plaintiffs application or prayer for the issuance of a writ of
Considering the absence of counsel/s for the defendant/s during the summary

preliminary injunction as embodied in the verified complaint in this case.

hearing scheduled on May 5, 1998 and also during the re-scheduled summary

Parenthetically, this Court earlier issued a temporary restraining order.

hearing held on May 14, 1998 set for the purpose of determining whether or not

(seeOrder dated May 15, 1998; see also Order dated May 26, 1998)

a Temporary Restraining Order shall be issued, this Court allowed the counsel
for the plaintiffs to present on May 14, 1998 their arguments/evidences in

After a careful perusal of the contents of the pleadings and documents on

support of their application. After hearing the arguments presented by the

record insofar as they are pertinent to the issue under consideration, this Court

counsel for the plaintiffs during the summary hearing, this Court is of the

finds that at this point in time, the plaintiffs appear to be entitled to the relief

considered and humble view that grave injustice and irreparable injury to the

prayed for and this Court is of the considered belief and humble view that,

plaintiffs would arise before the matter of whether or not the application for

without necessarily delving on the merits, the paramount interest of justice will

the issuance of a Writ of Preliminary Injunction can be heard, and that, in the

be better served if the status quo shall be maintained and that an injunction

interest of justice, and in the meantime, a Temporary Restraining Order be

bond of P2,500,000.00 appears to be in order. (see Sections 3 and 4, Rule 58,

issued.

1997 Rules of Civil Procedure)

WHEREFORE, let this Temporary Restraining Order be issued restraining the

IN VIEW OF THE FOREGOING, the plaintiffs prayer for the issuance of a writ

defendants, their officers, employees, agents, representatives, dealers,

of preliminary injunction is GRANTED. Accordingly, upon the plaintiffs filing,

within ten (10) days from their receipt hereof, an injunction bond

On 2 October 1998, the trial court denied Clinton Apparelles Motion to

of P2,500,000.00 executed to the defendants to the effect that the plaintiffs

Dismiss and Motion for Reconsideration in an Omnibus Order,26 the pertinent

will pay all damages the defendants may sustain by reason of this injunction in

portions of which provide:

case the Court should finally decide that the plaintiffs are not entitled thereto,
let a writ of preliminary injunction issue enjoining or restraining the commission

After carefully going over the contents of the pleadings in relation to pertinent

of the acts complained of in the verified Complaint in this case, and specifically,

portions of the records, this Court is of the considered and humble view that:

for the defendants, their officers, employees, agents, representatives, dealers

and retailers or assigns or persons acting in their behalf to cease and desist

On the first motion, the arguments raised in the plaintiffs aforecited

from manufacturing, distributing, selling, offering for sale, advertising, or

Consolidated Opposition appears to be meritorious. Be that as it may, this Court

otherwise using, denims, jeans or pants with the design complained of in the

would like to emphasize, among other things, that the complaint states a cause of

verified Complaint in this case, which is substantially, if not exactly, similar to

action as provided under paragraphs 1 to 18 thereof.

plaintiffs "DOCKERS and DESIGN" trademark or logo as covered by the Bureau

of Patents, Trademarks and Technology Transfer Certificate of Registration No.

On the second motion, the arguments raised in the plaintiffs aforecited

46619, until after this case shall have been decided on the merits and/or until

Consolidated Opposition likewise appear to be impressed with merit. Besides,

further orders from this Court.20

there appears to be no strong and cogent reason to reconsider and set aside this
Courts Order dated June 4, 1998 as it has been shown so far that the

The evidence considered by the trial court in granting injunctive relief were as

trademark or logo of defendants is substantially, if not exactly, similar to

follows: (1) a certified true copy of the certificate of trademark registration

plaintiffs "DOCKERS and DESIGN" trademark or logo as covered by BPTTT

for "Dockers and Design"; (2) a pair of DOCKERS pants bearing the "Dockers and

Certificate of Registration No. 46619 even as the BPTTT Certificate of

Design" trademark; (3) a pair of "Paddocks" pants bearing respondents assailed

Registration No. 49579 of Clinton Apparelle, Inc. is only for the mark or word

logo; (4) the Trends MBL Survey Report purportedly proving that there was

"PADDOCKS" (see Records, p. 377) In any event, this Court had issued an Order

confusing similarity between two marks; (5) the affidavit of one Bernabe Alajar

dated June 18, 1998 for the issuance of the writ of preliminary injunction after

which recounted petitioners prior adoption, use and registration of the "Dockers

the plaintiffs filed the required bond of P2,500,000.00.

and Design" trademark; and (6) the affidavit of one Mercedes Abad of Trends
MBL, Inc. which detailed the methodology and procedure used in their survey and
the results thereof.

IN VIEW OF THE FOREGOING, the aforecited Motion To Dismiss and Motion

For Reconsideration are both DENIED for lack of merit, and accordingly, this

21

Courts Order dated June 18, 1998 for the issuance of the writ of preliminary
Clinton Apparelle thereafter filed a Motion to Dismiss

22

and a Motion for

injunction is REITERATED so the writ of preliminary injunction could be

Reconsideration of the Order granting the writ of preliminary injunction.

implemented unless the implementation thereof is restrained by the Honorable

Meantime, the trial court issued an Order

Court of Appeals or Supreme Court.

23

24

approving the bond filed by

petitioners.
The writ of preliminary injunction was thereafter issued on 8 October 1998. 27
On 22 June 1998, the trial court required25 the parties to file their "respective
citation of authorities/ jurisprudence/Supreme Court decisions" on whether or

Thus, Clinton Apparelle filed with the Court of Appeals a Petition28 for

not the trial court may issue the writ of preliminary injunction pending the

certiorari, prohibition and mandamus with prayer for the issuance of a

resolution of the Motion for Reconsideration and the Motion to Dismiss filed by

temporary restraining order and/or writ of preliminary injunction, assailing the

respondent.

orders of the trial court dated 15 May 1998, 4 June 1998 and 2 October 1998.

On 20 October 1998, the Court of Appeals issued a Resolution29 requiring herein

the parties and which was adopted by the trial court; and (5) in declaring that

petitioners to file their comment on the Petition and at the same time issued the

the preliminary injunction issued by the trial court will lead to the closure of

prayed-for temporary restraining order.

respondents business.

The appellate court rendered on 21 December 1998 its now

In its Comment,33 Clinton Apparelle maintains that only questions of law may be

assailed Decision granting Clinton Apparelles petition. The Court of Appeals held

raised in an appeal by certiorari under Rule 45 of the Rules of Court. It asserts

that the trial court did not follow the procedure required by law for the issuance

that the question of whether the Court of Appeals erred in: (1) disregarding the

of a temporary restraining order as Clinton Apparelle was not duly notified of

survey evidence; (2) ruling that there was no confusion between the two marks;

the date of the summary hearing for its issuance. Thus, the Court of Appeals

and (c) finding that the erosion of petitioners trademark may not be protected

ruled that the TRO had been improperly issued.30

by injunction, are issues not within the ambit of a petition for review on
certiorari under Rule 45. Clinton Apparelle also contends that the Court of

The Court of Appeals also held that the issuance of the writ of preliminary

Appeals acted correctly when it overturned the writ of preliminary injunction

injunction is questionable. In its opinion, herein petitioners failed to sufficiently

issued by the trial court. It believes that the issued writ in effect disturbed

establish its material and substantial right to have the writ issued. Secondly, the

the status quo and disposed of the main case without trial.

Court of Appeals observed that the survey presented by petitioners to support

their contentions was commissioned by petitioners. The Court of Appeals

There is no merit in the petition.

remarked that affidavits taken ex-parte are generally considered to be inferior

to testimony given in open court. The appellate court also considered that the

At issue is whether the issuance of the writ of preliminary injunction by the trial

injury petitioners have suffered or are currently suffering may be compensated

court was proper and whether the Court of Appeals erred in setting aside the

in terms of monetary consideration, if after trial, a final judgment shall be

orders of the trial court.

rendered in their favor.

31

Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an

In addition, the Court of Appeals strongly believed that the implementation of

order granted at any stage of an action prior to the judgment or final order

the questioned writ would effectively shut down respondents business, which in

requiring a party or a court, agency or a person to refrain from a particular act

its opinion should not be sanctioned. The Court of Appeals thus set aside the

or acts. Injunction is accepted as the strong arm of equity or a transcendent

orders of the trial court dated 15 May 1998 and 4 June 1998, respectively

remedy to be used cautiously as it affects the respective rights of the parties,

issuing a temporary restraining order and granting the issuance of a writ of

and only upon full conviction on the part of the court of its extreme necessity.

preliminary injunction.

An extraordinary remedy, injunction is designed to preserve or maintain

the status quo of things and is generally availed of to prevent actual or

With the denial of their Motion for Reconsideration,

32

petitioners are now

threatened acts until the merits of the case can be heard. 34It may be resorted

before this Court seeking a review of the appellate

to only by a litigant for the preservation or protection of his rights or interests

courts Decision and Resolution. LS & Co. and LSPI claim that the Court of

and for no other purpose during the pendency of the principal action. 35 It is

Appeals committed serious error in: (1) disregarding the well-defined limits of

resorted to only when there is a pressing necessity to avoid injurious

the writ of certiorari that questions on the sufficiency of evidence are not to be

consequences, which cannot be remedied under any standard compensation. The

resolved in such a petition; (2) in holding that there was no confusion between

resolution of an application for a writ of preliminary injunction rests upon the

the two marks; (3) in ruling that the erosion of petitioners trademark is not

existence of an emergency or of a special recourse before the main case can be

protectable by injunction; (4) in ignoring the procedure previously agreed on by

heard in due course of proceedings.36

Section 3, Rule 58, of the Rules of Court enumerates the grounds for the

in the manner provided by law. The exercise of discretion by the trial court in

issuance of a preliminary injunction:

injunctive matters is generally not interfered with save in cases of manifest

abuse.40 And to determine whether there was abuse of discretion, a scrutiny

SEC. 3. Grounds for issuance of preliminary injunction. A preliminary injunction

must be made of the bases, if any, considered by the trial court in granting

may be granted when it is established:

injunctive relief. Be it stressed that injunction is the strong arm of equity which
must be issued with great caution and deliberation, and only in cases of great

(a) That the applicant is entitled to the relief demanded, and the whole or part

injury where there is no commensurate remedy in damages.41

of such relief consists in restraining the commission or continuance of the act or

acts complained of, or in requiring the performance of an act or acts, either for

In the present case, we find that there was scant justification for the issuance

a limited period or perpetually;

of the writ of preliminary injunction.

(b) That the commission, continuance, or non-performance of the act or acts

Petitioners anchor their legal right to "Dockers and Design" trademark on the

complained of during the litigation would probably work injustice to the

Certificate of Registration issued in their favor by the Bureau of Patents,

applicant; or

Trademarks and Technology Transfer.* According to Section 138 of Republic Act

No. 8293,42 this Certificate of Registration is prima facie evidence of the

(c) That a party, court, agency or a person is doing, threatening, or is attempting

validity of the registration, the registrants ownership of the mark and of the

to do, or is procuring or suffering to be done, some act or acts probably in

exclusive right to use the same in connection with the goods or services and

violation of the rights of the applicant respecting the subject of the action or

those that are related thereto specified in the certificate. Section 147.1 of said

proceeding, and tending to render the judgment ineffectual.

law likewise grants the owner of the registered mark the exclusive right to
prevent all third parties not having the owners consent from using in the course

Under the cited provision, a clear and positive right especially calling for judicial

of trade identical or similar signs for goods or services which are identical or

protection must be shown. Injunction is not a remedy to protect or enforce

similar to those in respect of which the trademark is registered if such use

contingent, abstract, or future rights; it will not issue to protect a right not in

results in a likelihood of confusion.

esse and which may never arise, or to restrain an act which does not give rise to
a cause of action. There must exist an actual right. 37 There must be a patent

However, attention should be given to the fact that petitioners registered

showing by the complaint that there exists a right to be protected and that the

trademark consists of two elements: (1) the word mark "Dockers" and (2) the

acts against which the writ is to be directed are violative of said right. 38

wing-shaped design or logo. Notably, there is only one registration for both
features of the trademark giving the impression that the two should be

There are generally two kinds of preliminary injunction: (1) a prohibitory

considered as a single unit. Clinton Apparelles trademark, on the other hand,

injunction which commands a party to refrain from doing a particular act; and (2)

uses the "Paddocks" word mark on top of a logo which according to petitioners is

a mandatory injunction which commands the performance of some positive act to

a slavish imitation of the "Dockers" design. The two trademarks apparently

correct a wrong in the past.39

differ in their word marks ("Dockers" and "Paddocks"), but again according to
petitioners, they employ similar or identical logos. It could thus be said that

The Court of Appeals did not err in reviewing proof adduced by petitioners to

respondent only "appropriates" petitioners logo and not the word mark

support its application for the issuance of the writ. While the matter of the

"Dockers"; it uses only a portion of the registered trademark and not the whole.

issuance of a writ of preliminary injunction is addressed to the sound discretion

of the trial court, this discretion must be exercised based upon the grounds and

Given the single registration of the trademark "Dockers and Design" and

considering that respondent only uses the assailed device but a different word

mark." This is intended to protect famous marks from subsequent uses that blur

mark, the right to prevent the latter from using the challenged "Paddocks"

distinctiveness of the mark or tarnish or disparage it. 44

device is far from clear. Stated otherwise, it is not evident whether the single
registration of the trademark "Dockers and Design" confers on the owner the

Based on the foregoing, to be eligible for protection from dilution, there has to

right to prevent the use of a fraction thereof in the course of trade. It is also

be a finding that: (1) the trademark sought to be protected is famous and

unclear whether the use without the owners consent of a portion of a trademark

distinctive; (2) the use by respondent of "Paddocks and Design" began after the

registered in its entirety constitutes material or substantial invasion of the

petitioners mark became famous; and (3) such subsequent use defames

owners right.

petitioners mark. In the case at bar, petitioners have yet to establish whether
"Dockers and Design" has acquired a strong degree of distinctiveness and

It is likewise not settled whether the wing-shaped logo, as opposed to the word

whether the other two elements are present for their cause to fall within the

mark, is the dominant or central feature of petitioners trademarkthe feature

ambit of the invoked protection. The Trends MBL Survey Report which

that prevails or is retained in the minds of the publican imitation of which

petitioners presented in a bid to establish that there was confusing similarity

creates the likelihood of deceiving the public and constitutes trademark

between two marks is not sufficient proof of any dilution that the trial court

infringement.

43

In sum, there are vital matters which have yet and may only be

must enjoin.

established through a full-blown trial.

The Court also finds that the trial courts order granting the writ did not
From the above discussion, we find that petitioners right to injunctive relief has

adequately detail the reasons for the grant, contrary to our ruling in University

not been clearly and unmistakably demonstrated. The right has yet to be

of the Philippines v. Hon. Catungal Jr., 45 wherein we held that:

determined. Petitioners also failed to show proof that there is material and
substantial invasion of their right to warrant the issuance of an injunctive writ.

The trial court must state its own findings of fact and cite particular law to

Neither were petitioners able to show any urgent and permanent necessity for

justify grant of preliminary injunction. Utmost care in this regard is demanded. 46

the writ to prevent serious damage.

The trial court in granting the injunctive relief tersely ratiocinated that "the
Petitioners wish to impress upon the Court the urgent necessity for injunctive

plaintiffs appear to be entitled to the relief prayed for and this Court is of the

relief, urging that the erosion or dilution of their trademark is protectable. They

considered belief and humble view that, without necessarily delving on the

assert that a trademark owner does not have to wait until the mark loses its

merits, the paramount interest of justice will be better served if

distinctiveness to obtain injunctive relief, and that the mere use by an infringer

the status quo shall be maintained." Clearly, this statement falls short of the

of a registered mark is already actionable even if he has not yet profited

requirement laid down by the above-quoted case. Similarly, in Developers Group

thereby or has damaged the trademark owner.

of Companies, Inc. v. Court of Appeals,47 we held that it was "not enough" for the
trial court, in its order granting the writ, to simply say that it appeared "after

Trademark dilution is the lessening of the capacity of a famous mark to identify

hearing that plaintiff is entitled to the relief prayed for."

and distinguish goods or services, regardless of the presence or absence of: (1)
competition between the owner of the famous mark and other parties; or (2)

In addition, we agree with the Court of Appeals in its holding that the damages

likelihood of confusion, mistake or deception. Subject to the principles of equity,

the petitioners had suffered or continue to suffer may be compensated in terms

the owner of a famous mark is entitled to an injunction "against another persons

of monetary consideration. As held in Government Service Insurance System v.

commercial use in commerce of a mark or trade name, if such use begins after

Florendo:48

the mark has become famous and causes dilution of the distinctive quality of the

a writ of injunction should never have been issued when an action for damages

was accorded due process. Due process, in essence, is simply an opportunity to be

would adequately compensate the injuries caused. The very foundation of the

heard. And in applications for preliminary injunction, the requirement of hearing

jurisdiction to issue the writ of injunction rests in the probability of irreparable

and prior notice before injunction may issue has been relaxed to the point that

injury, inadequacy of pecuniary estimation and the prevention of the multiplicity

not all petitions for preliminary injunction must undergo a trial-type hearing, it

of suits, and where facts are not shown to bring the case within these

being a hornbook doctrine that a formal or trial-type hearing is not at all times

conditions, the relief of injunction should be refused.

49

and in all instances essential to due process. Due process simply means giving
every contending party the opportunity to be heard and the court to consider

We also believe that the issued injunctive writ, if allowed, would dispose of the

every piece of evidence presented in their favor. Accordingly, this Court has in

case on the merits as it would effectively enjoin the use of the "Paddocks"

the case of Co v. Calimag, Jr.,52 rejected a claim of denial of due process where

device without proof that there is basis for such action. The prevailing rule is

such claimant was given the opportunity to be heard, having submitted his

that courts should avoid issuing a writ of preliminary injunction that would in

counter-affidavit and memorandum in support of his position. 53

effect dispose of the main case without trial.

50

There would be a prejudgment of

the main case and a reversal of the rule on the burden of proof since it would
assume the proposition which petitioners are inceptively bound to prove.

51

After a careful consideration of the facts and arguments of the parties, the
Court finds that petitioners did not adequately prove their entitlement to the
injunctive writ. In the absence of proof of a legal right and the injury sustained

Parenthetically, we find no flaw in the Court of Appeals disquisition on the

by the applicant, an order of the trial court granting the issuance of an

consequences of the issued injunction. An exercise of caution, we believe that

injunctive writ will be set aside for having been issued with grave abuse of

such reflection is necessary to weigh the alleged entitlement to the writ vis--

discretion.54 Conformably, the Court of Appeals was correct in setting aside the

vis its possible effects. The injunction issued in the instant case is of a serious

assailed orders of the trial court.

nature as it tends to do more than to maintain the status quo. In fact, the
assailed injunction if sustained would bring about the result desired by

WHEREFORE, the instant petition is DENIED. The Decision of the Court of

petitioners without a trial on the merits.

Appeals dated 21 December 1998 and its Resolution dated 10 May 1999 are
AFFIRMED. Costs against petitioners.

Then again, we believe the Court of Appeals overstepped its authority when it
declared that the "alleged similarity as to the two logos is hardly confusing to
the public." The only issue brought before the Court of Appeals through
respondents Petition under Rule 65 of the Rules of Court involved the grave
abuse of discretion allegedly committed by the trial court in granting the TRO
and the writ of preliminary injunction. The appellate court in making such a
statement went beyond that issue and touched on the merits of the infringement
case, which remains to be decided by the trial court. In our view, it was
premature for the Court of Appeals to declare that there is no confusion
between the two devices or logos. That matter remains to be decided on by the
trial court.
Finally, we have no contention against the procedure adopted by the trial court in
resolving the application for an injunctive writ and we believe that respondent

SO ORDERED.

G.R. No. L-40163 June 19, 1982

Leviton; that long subsequent to the use of plaintiff's trademark and trade name
in the Philippines, defendants began manufacturing and selling electrical ballast,

LEVITON INDUSTRIES, NENA DE LA CRUZ LIM, DOMINGO GO, and LIM

fuse and oval buzzer under the trademark Leviton and trade name Leviton

KIAT, petitioners,

Industries Co.; that Domingo Go, partner and general manager of defendant

vs.

partnership, had registered with the Philippine Patent Office the trademarks

HON. SERAFIN SALVADOR, Judge, Court of First Instance of Rizal,

Leviton Label and Leviton with respect to ballast and fuse under Certificate of

Caloocan City, Branch XIV and LEVITON MANUFACTURING CO.,

Registration Nos. SR-1132 and 15517, respectively, which registration was

INC., respondents.

contrary to paragraphs (d) and (e) of Section 4 of RA 166, as amended, and

violative of plaintiff's right over the trademark Leviton; that defendants not
only used the trademark Leviton but likewise copied the design used by plaintiff
in distinguishing its trademark; and that the use thereof by defendants of its

ESCOLIN, J:

products would cause confusion in the minds of the consumers and likely to
deceive them as to the source of origin, thereby enabling defendants to pass off

Challenged in this petition for certiorari and prohibition is the order of the

their products as those of plaintiff's. Invoking the provisions of Section 21-A of

respondent Judge Serafin Salvador in Civil Case No. C-2891 of the Court of First

Republic Act No. 166, plaintiff prayed for damages. It also sought the issuance

Instance of Rizal, sustaining the legal capacity of a foreign corporation to

of a writ of injunction to prohibit defendants from using the trade name Leviton

maintain a suit for unfair competition under Section 21-A of Republic Act No.

Industries, Co. and the trademark Leviton.

166, as amended, otherwise known as the Trademark Law.

Defendants moved to dismiss the complaint for failure to state a cause of action,
On April 17, 1973, private respondent Leviton Manufacturing Co., Inc. filed a

drawing attention to the plaintiff's failure to allege therein its capacity to sue

complaint for unfair competition against petitioners Leviton Industries, Nena de

under Section 21-A of Republic Act No. 166, as amended. After the filing of the

la Cruz Lim, Domingo Go and Lim Kiat before the Court of First Instance of Rizal,

plaintiff's opposition and the defendant's reply, the respondent judge denied

Branch XXXIII, presided by respondent Judge Serafin Salvador. The complaint

the motion on the ground that the same did not appear to be indubitable. On

substantially alleges that plaintiff is a foreign corporation organized and existing

September 21, 1973, defendants filed their answer, reiterating the ground

under the laws of the State of New York, United States of America, with office

supporting their motion to dismiss. Thereafter, defendants served upon plaintiff

located at 236 Greenpoint Avenue, Brooklyn City, State of New York, U.S.A.;

a request for admission under Rule 26 of the Rules of Court, of the following

that defendant Leviton Industries is a partnership organized and existing under

matters of fact, to wit:

the laws of the Philippines with principal office at 382 10th Avenue, Grace Park,
Caloocan City; while defendants Nena de la Cruz Lim, Domingo Go and Lim Kiat

(1) That the plaintiff is not actually manufacturing, selling

are the partners, with defendant Domingo Go acting as General Manager of

and/or distributing ballasts generally used in flourescent

defendant Leviton Industries; that plaintiff, founded in 1906 by Isidor Leviton,

lighting;

is the largest manufacturer of electrical wiring devices in the United States

under the trademark Leviton, which various electrical wiring devices bearing the

(2) That plaintiff has no registered trademark or trade name in

trademark Leviton and trade name Leviton Manufacturing Co., Inc. had been

the Philippine Patent Office of any of its products; and

exported to the Philippines since 1954; that due to the superior quality and
widespread use of its products by the public, the same are well known to Filipino

(3) That plaintiff has no license to do business in the Philippines

consumers under the trade name Leviton Manufacturing Co., Inc. and trademark

under and by virtue of the provision of Act No. 1459, better

known as the Philippine Corporation Law, at the time it filed the

complaint.

whether or not it has been licensed to do business in the

Philippines under Act numbered Fourteen Hundred and FiftyNine, as amended, otherwise known as the Corporation Law, at

Complying with the said request, plaintiff admitted:

the time it brings the complaint; Provided, That the country of

which the said foreign corporation or juristic person is a

That it does not manufacture ballasts; that it has not registered its trademark

citizen, or in which it is domiciled, by treaty, convention or law,

in the Philippine Patent Office, but has filed with the same office an application

grants a similar privilege to corporate or juristic persons of the

of its trade mark on April 16, 1971; and that it has no license to do business in

Philippines. (As amended by R.A. No. 638)

the Philippines.

Undoubtedly, the foregoing section grants to a foreign corporation, whether or

On the basis of these admissions, defendants filed an Urgent Supplemental

not licensed to do business in the Philippines, the right to seek redress for

Motion to Dismiss. This was followed by the plaintiff's opposition, and the

unfair competition before Philippine courts. But the said law is not without

defendant's rejoinder, after which respondent judge issued the questioned

qualifications. Its literal tenor indicates as a condition sine qua non the

order denying the motion, thus:

registration of the trade mark of the suing foreign corporation with the
Philippine Patent Office or, in the least, that it be an asignee of such registered

Acting on the Urgent Supplemental Motion to Dismiss, dated

trademark. The said section further requires that the country, of which the

July 2, 1974, filed by counsels for the defendants, as well as

plaintiff foreign corporation or juristic person is a citizen or domicilliary, grants

the oppositions thereto, the Court after a careful consideration

to Filipino corporations or juristic entities the same reciprocal treatment, either

of the reasons adduced for and against said motion, is of the

thru treaty, convention or law,

opinion that the same should be, as it is hereby DENIED.

All that is alleged in private respondent's complaint is that it is a foreign
SO ORDERED.

corporation. Such bare averment not only fails to comply with the requirements
imposed by the aforesaid Section 21-A but violates as well the directive of

The motion for reconsideration having likewise been denied, defendants

Section 4, Rule 8 of the Rules of Court that "facts showing the capacity of a

instituted the instant petition for certiorari and prohibition, charging

party to sue or be sued or the authority of a party to sue or be sued in a

respondent judge with grave abuse of discretion in denying their motion to

representative capacity or the legal existence of an organized association of

dismiss.

persons that is made a party, must be averred "

We agree with petitioners that respondent Leviton Marketing Co., Inc. had failed

In the case at bar, private respondent has chosen to anchor its action under the

to allege the essential facts bearing upon its capacity to sue before Philippine

Trademark Law of the Philippines, a law which, as pointed out, explicitly sets

courts. Private respondent's action is squarely founded on Section 21-A of

down the conditions precedent for the successful prosecution thereof. It is

Republic Act No. 166, as amended, which we quote:

therefore incumbent upon private respondent to comply with these requirements

Sec. 21-A. Any foreign corporation or juristic person to which a

mark or tradename has been registered or assigned under this
Act may bring an action hereunder for infringement, for unfair
competition, or false designation of origin and false description,

or aver its exemption therefrom, if such be the case. It may be that private
respondent has the right to sue before Philippine courts, but our rules on
pleadings require that the necessary qualifying circumstances which clothe it
with such right be affirmatively pleaded. And the reason therefor, as enunciated
in "Atlantic Mutual Insurance Co., et al. versus Cebu Stevedoring Co., Inc ." 4 is

that
these are matters peculiarly within the knowledge of appellants
alone, and it would be unfair to impose upon appellees the
burden of asserting and proving the contrary. It is enough that
foreign corporations are allowed by law to seek redress in our
courts under certain conditions: the interpretation of the law
should not go so far as to include, in effect, an inference that
those conditions had been met from the mere fact that the
party sued is a foreign corporation.
It was indeed in the light of this and other considerations that
this Court has seen fit to amend the former rule by requiring in
the revised rules (Section 4, Rule 8) that "facts showing the
capacity of a party to sue or be sued or the authority of a party
to sue or be sued in a representative capacity or the legal
existence of an organized association of persons that is made a
party, must be averred,
IN VIEW OF THE FOREGOING, the instant petition is hereby granted and,
accordingly, the order of the respondent judge dated September 27, 1974
denying petitioner's motion to dismiss is hereby set aside. The Court of First
Instance of Rizal (Caloocan City), the court of origin, is hereby restrained from
conducting further proceedings in Civil Case No. C-2891, except to dismiss the
same. No costs.
SO ORDERED.
Facts: Private respondent Leviton Manufacturing Co. Inc. filed a complaint for
unfair competition against petitioners Leviton Industries before the CFI of Rizal
(RTC), presided by respondent Judge Serafin Salvador. The complaint
substantially alleges that plaintiff (Leviton Manufacturing) is a foreign
corporation organized and existing under the laws of the State of New York,
United States of America with office located at 236 Greenpoint Avenue,
Brooklyn City, State of New York, U.S.A. That defendant Leviton Industries is a
partnership organized and existing under the laws of the Philippines with
principal office at 382 10th Avenue, Grace Park, Caloocan City; while defendants
Nena de la Cruz Lim, Domingo Go and Lim Kiat are the partners, with defendant
Domingo Go acting as General Manager of defendant Leviton Industries. That

plaintiff, founded in 1906 by Isidor Leviton, is the largest manufacturer of

electrical wiring devices in the United States under the trademark Leviton,
which various electrical wiring devices bearing the trademark Leviton and trade
name Leviton Manufacturing Co., Inc. had been exported to the Philippines since
1954; that due to the superior quality and widespread use of its products by the
public, the same are well known to Filipino consumers under the trade name
Leviton Manufacturing Co., Inc. and trademark Leviton; that long subsequent to
the use of plaintiffs trademark and trade name in the Philippines, defendants
(Leviton Industries) began manufacturing and selling electrical ballast, fuse and
oval buzzer under the trademark Leviton and trade name Leviton Industries Co.
That Domingo Go, partner and general manager of defendant partnership, had
registered with the Philippine Patent Office the trademarks Leviton Label and
Leviton with respect to ballast and fuse under Certificate of Registration Nos.
SR-1132 and 15517, respectively, which registration was contrary to paragraphs
(d) and (e) of Section 4 of RA 166, as amended, and violative of plaintiffs right
over the trademark Leviton; that defendants not only used the trademark
Leviton but likewise copied the design used by plaintiff in distinguishing its
trademark; and that the use thereof by defendants of its products would cause
confusion in the minds of the consumers and likely to deceive them as to the
source of origin, thereby enabling defendants to pass off their products as
those of plaintiffs. Invoking the provisions of Section 21-A of Republic Act No.
166, plaintiff prayed for damages. It also sought the issuance of a writ of
injunction to prohibit defendants from using the trade name Leviton Industries,
Co. and the trademark Leviton.
Defendants moved to dismiss the complaint for failure to state a cause of action,
drawing attention to the plaintiffs failure to allege therein its capacity to sue
under Section 21-A of Republic Act No. 166, as amended. After the filing of the
plaintiffs opposition and the defendants reply, the respondent judge denied the
motion on the ground that the same did not appear to be indubitable.
The motion for reconsideration having likewise been denied, defendants
instituted the instant petition for certiorari and prohibition, charging
respondent judge with grave abuse of discretion in denying their motion to
dismiss.
Issue: Whether or not the plaintiff (Leviton Manufacturing) herein respondents,
failed to allege the essential facts bearing its capacity to sue before Philippine
courts.
Ruling: Yes.
We agree with petitioners that respondent Leviton Marketing Co., Inc. had failed

to allege the essential facts bearing upon its capacity to sue before Philippine
courts. Private respondents action is squarely founded on Section 21-A of
Republic Act No. 166, as amended, which we quote:
Sec. 21-A. Any foreign corporation or juristic person to which a mark or
tradename has been registered or assigned under this Act may bring an action
hereunder for infringement, for unfair competition, or false designation of origin
and false description, whether or not it has been licensed to do business in the
Philippines under Act numbered Fourteen Hundred and Fifty-Nine, as amended,
otherwise known as the Corporation Law, at the time it brings the complaint;
Provided, That the country of which the said foreign corporation or juristic
person is a citizen, or in which it is domiciled, by treaty, convention or law, grants
a similar privilege to corporate or juristic persons of the Philippines. (As
amended by R.A. No. 638)
Undoubtedly, the foregoing section grants to a foreign corporation, whether or
not licensed to do business in the Philippines, the right to seek redress for
unfair competition before Philippine courts. But the said law is not without
qualifications. Its literal tenor indicates as a condition sine qua non the
registration of the trade mark of the suing foreign corporation with the
Philippine Patent Office or, in the least, that it be an asignee of such registered
trademark. The said section further requires that the country, of which the
plaintiff foreign corporation or juristic person is a citizen or domicilliary, grants
to Filipino corporations or juristic entities the same reciprocal treatment, either
thru treaty, convention or law,
All that is alleged in private respondents complaint is that it is a foreign
corporation. Such bare averment not only fails to comply with the requirements
imposed by the aforesaid Section 21-A but violates as well the directive of
Section 4, Rule 8 of the Rules of Court that facts showing the capacity of a
party to sue or be sued or the authority of a party to sue or be sued in a
representative capacity or the legal existence of an organized association of
persons that is made a party, must be averred

In the case at bar, private respondent has chosen to anchor its action under the
Trademark Law of the Philippines, a law which, as pointed out, explicitly sets
down the conditions precedent for the successful prosecution thereof. It is
therefore incumbent upon private respondent to comply with these requirements
or aver its exemption therefrom, if such be the case. It may be that private
respondent has the right to sue before Philippine courts, but our rules on
pleadings require that the necessary qualifying circumstances which clothe it
with such right be affirmatively pleaded. And the reason therefor, as enunciated
in Atlantic Mutual Insurance Co., et al. versus Cebu Stevedoring Co., Inc. 4 is
that

these are matters peculiarly within the knowledge of appellants alone, and it
would be unfair to impose upon appellees the burden of asserting and proving the
contrary. It is enough that foreign corporations are allowed by law to seek
redress in our courts under certain conditions: the interpretation of the law
should not go so far as to include, in effect, an inference that those conditions
had been met from the mere fact that the party sued is a foreign corporation.
It was indeed in the light of this and other considerations that this Court has
seen fit to amend the former rule by requiring in the revised rules (Section 4,
Rule 8) that facts showing the capacity of a party to sue or be sued or the
authority of a party to sue or be sued in a representative capacity or the legal
existence of an organized association of persons that is made a party, must be
averred,
IN VIEW OF THE FOREGOING, the instant petition is hereby granted and,
accordingly, the order of the respondent judge dated September 27, 1974
denying petitioners motion to dismiss is hereby set aside. The Court of First
Instance of Rizal (Caloocan City), the court of origin, is hereby restrained from
conducting further proceedings in Civil Case No. C-2891, except to dismiss the
same. No costs.

G.R. No. 75067 February 26, 1988

Inter Partes Case No. 1945 also between the same parties this
time the petitioner praying for the cancellation of private

PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner

respondent's Certificate of Registration No. 26875 (pp. 40-41,

vs.

255, Rollo) (pp. 51 -52, Rollo)

THE INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING

CORPORATION, respondents.

On July 31, 1985, the trial court issued a temporary restraining order,
restraining the private respondent and the Director of Patents from using the
trademark "PUMA' or any reproduction, counterfeit copy or colorable imitation
thereof, and to withdraw from the market all products bearing the same

GUTIERREZ, JR., J.:

trademark.

This is a petition for review by way of certiorari of the Court of Appeals'

On August 9, 1985, the private respondent filed a motion to dismiss on the

decision which reversed the order of the Regional Trial Court and dismissed the

grounds that the petitioners' complaint states no cause of action, petitioner has

civil case filed by the petitioner on the grounds of litis pendentia and lack of

no legal personality to sue, and litis pendentia.

legal capacity to sue.

On August 19, 1985, the trial court denied the motion to dismiss and at the same
On July 25, 1985, the petitioner, a foreign corporation duly organized and

time granted the petitioner's application for a writ of injunction. The private

existing under the laws of the Federal Republic of Germany and the

respondents appealed to the Court of Appeals.

manufacturer and producer of "PUMA PRODUCTS," filed a complaint for

infringement of patent or trademark with a prayer for the issuance of a writ of

On June 23, 1986, the Court of Appeals reversed the order of the trial court

preliminary injunction against the private respondent before the Regional Trial

and ordered the respondent judge to dismiss the civil case filed by the

Court of Makati.

petitioner.

Prior to the filing of the said civil suit, three cases were pending before the

In reversing the order of the trial court, the Court of Appeals ruled that the

Philippine Patent Office, namely:

requisites of lis pendens as ground for the motion to dismiss have been met. It
said:

Inter Partes Case No. 1259 entitled 'PUMA

SPORTSCHUHFABRIKEN v. MIL-ORO MANUFACTURING

Obviously, the parties are Identical. They are the same

CORPORATION, respondent-applicant which is an opposition to

protagonists. As to the second requisite, which is Identity of

the registration of petitioner's trademark 'PUMA and DEVICE'

rights and reliefs prayed for, both sides maintain that they are

in the PRINCIPAL REGISTER;

the rightful owners of the trademark "PUMA" for socks and

belts such that both parties seek the cancellation of the

Inter Partes Case No. 1675 similarly entitled, 'PUMA

trademark of the other (see prayer in private respondent's

SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner,

complaint, pp, 54-55, Rollo, Annex "A" to the Petition).

versus MIL-ORO MANUFACTURING CORPORATION,

Inevitably, in either the lower court or in the Patent Office,

respondent-registrant,' which is a case for the cancellation of

there is a need to resolve the issue as to who is the rightful

the trademark registration of the petitioner; and

owner of the TRADEMARK 'PUMA' for socks and belts.After

all,the right to register a trademark must be based on

Intermediate Appellate Court (Sec. 9, BP 129), as both are co-

ownership thereof (Operators Inc. v. Director of Patents, L-

equal in rank regarding the cases that may fall within their

17910, Oct. 29,1965,15 SCRA 147). Ownership of the trademark

jurisdiction.

is an essential requisite to be proved by the applicant either in

a cancellation case or in a suit for infringement of trademark.

The record reveals that on March 31, 1986, the Philippine

The relief prayed for by the parties in Inter Partes Cases Nos.

Patent Office rendered a decision in Inter Partes Cases Nos.

1259, 1675 and 1945 and Civil Case No. 11189 before

1259 and 1675 whereby it concluded that petitioner is the prior

respondent court seek for the cancellation of usurper's

and actual adaptor of the trademark 'PUMA and DEVICE used

trademark, and the right of the legal owner to have exclusive

on sports socks and belts, and that MIL-ORO CORPORATION

use of said trademark. From the totality of the obtaining

is the rightful owner thereof. ... (pp. 6-7, CA decision, pp. 51-

circumstances, the rights of the respective parties are

52, Rollo)

dependent upon the resolution of a single issue, that is, the

rightful ownership of the trademark in question. The second

With regard to the petitioner's legal capacity to sue, the Court of Appeals

requisite needed to justify a motion to dismiss based on lis

likewise held that it had no such capacity because it failed to allege reciprocity

pendens is present.

in its complaint:

As to the third requisite, the decisions and orders of

As to private respondent's having no legal personality to sue,

administrative agencies rendered pursuant to their quasi-

the record discloses that private respondent was suing under

judicial authority have upon their finality the character of res

Sec. 21-A of Republic Act No. 166, as amended (p. 50, Annex

judicata (Brilliantes v. Castro, 99 Phil. 497). The rule which

"A", Petition). This is the exception to the general rule that a

forbids the re-opening of a matter once judicially determined

foreign corporation doing business in the Philippines must

by competent authority applies as well to judicial acts of public

secure a license to do business before said foreign corporation

executive and administrative officers and boards acting within

could maintain a court or administrative suit (Sec. 133,

their jurisdiction as to the judgments of Courts having general

Corporation Code, in relation to Sec. 21-A, RA 638, as

judicial powers (Brilliantes vs. Castro, supra). It may be recalled

amended). However, there are some conditions which must be

that the resolution and determination of the issue on ownership

met before that exception could be made to apply, namely: (a)

are both within the jurisdiction of the Director of Patents and

the trademark of the suing corporation must be registered in

the Regional Trial Court (Sec 25, RA 166). It would thus be

the Philippines, or that it be the assignee thereof: and (b) that

confusing for two (2) different forums to hear the same case

there exists a reciprocal treatment to Philippine Corporations

and resolve a main and determinative issue with both forums

either by law or convention by the country of origin of the

risking the possibility of arriving at different conclusions. In

foreign corporation (Sec. 21-A Trademark Law). Petitioner

the construction of laws and statutes regarding jurisdiction,

recognizes that private respondent is the holder of several

one must interpret them in a complementary manner for it is

certificates of registration, otherwise, the former would not

presumed that the legislature does not intend any absurdity in

have instituted cancellation proceedings in the Patent's Office.

the laws it makes (Statutory Construction, Martin, p. 133). Ms

Petitioner actually zeroes on the second requisite provided by

is precisely the reason why both decisions of the Director of

Section 21-A of the Trademark Law which is the private

Patents and Regional Trial Court are appealable to the

respondent's failure to allege reciprocity in the complaint. ...

Citing the case of Leviton Industries v. Salvador (114 SCRA 420), it further

Petitioner maintains that it has substantially complied with the requirements of

ruled:

Section 21-A of Republic Act R.A. No. 166, as amended. According to the
petitioner, its complaint specifically alleged that it is not doing business in the
Failure to allege reciprocity, it being an essential fact under the

Philippines and is suing under the said Repulbic Act; that Section 21-A thereof

trademark law regarding its capacity to sue before the

provides that "the country of which the said corporation or juristic person is a

Philippine courts, is fatal to the foreign corporations' cause.

citizen, or in which it is domiciled, by treaty, convention or law, grants a similar

The Concurring Opinion of Chief Justice Aquino on the same

privilege to corporate or juristic persons of the Philippines" but does not

case is more emphatic when he said:

mandatorily require that such reciprocity between the Federal Republic of

Germany and the Philippines be pleaded; that such reciprocity arrangement is

Respondent Leviton Manufacturing Co. Inc.,

embodied in and supplied by the Union Convention for the Protection of

alleged in par. 2 of its complaint for unfair

Industrial Property Paris Convention) to which both the Philippines and Federal

competition that its action 'is being filed

Republic of Germany are signatories and that since the Paris 'Convention is a

under the provisions of Section 21-A of

treaty which, pursuant to our Constitution, forms part of the law of the land, our

Republic Act No. 166, as amended.'

courts are bound to take judicial notice of such treaty, and, consequently, this

Respondent is bound by the allegation in its

fact need not be averred in the complaint.

complaint. It cannot sue under Section 21-A

because it has not complied with the

We agree.

requirements hereof that (1) its trademark

Leviton has been registered with the Patent

In the leading case of La Chemise Lacoste, S.A .v. Fernandez, (129 SCRA 373),

Office and (2) that it should show that the

we ruled:

State of New York grants to Philippine

Corporations the privilege to bring an action

But even assuming the truth of the private respondents

for unfair competition in that state.

allegation that the petitioner failed to allege material facto in

Respondent 'Leviton has to comply with those

its petition relative to capacity to sue, the petitioner may still

requirements before it can be allowed to

maintain the present suit against respondent Hernandes. As

maintain an action for unfair competition.(p. 9,

early as 1927, this Court was, and it still is, of the view that a

CA decision).(p. 55, Rollo).

foreign corporation not doing business in the Philippines needs

no license to sue before Philippine courts for infringement of

The Court of Appeals further ruled that in issuing the writ of preliminary

trademark and unfair competition. Thus, in Western Equipment

injunction, the trial court committed grave abuse of discretion because it

and Supply Co. v. Reyes (51 Phil. 11 5), this Court held that a

deprived the private respondent of its day in court as the latter was not given

foreign corporation which has never done any business in the

the chance to present its counter-evidence.

Philippines and which is unlicensed and unregistered to do

business here, but is widely and favorably known in the

In this petition for review, the petitioner contends that the Court of appeals

Philippines through the use therein of its products bearing its

erred in holding that: (1) it had no legal capacity to sue; (2) the doctrine of lis

corporate and tradename, has a legal right to maintain an action

pendens is applicable as a ground for dismissing the case and (3) the writ of

in the Philippines to restrain the residents and inhabitants

injunction was improperly issued.

thereof from organizing a corporation therein bearing the same

name as the foreign corporation, when it appears that they have

The memorandum is a clear manifestation of our avowed

personal knowledge of the existence of such a foreign

adherence to a policy of cooperation and amity with an nations.

corporation, and it is apparent that the purpose of the

It is not, as wrongly alleged by the private respondent, a

proposed domestic corporation is to deal and trade in the same

personal policy of Minister Luis Villafuerte which expires once

goods as those of the foreign corporation.

he leaves the Ministry of trade. For a treaty or convention is

not a mere moral obligation to be enforced or not at the whims

Quoting the Paris Convention and the case of Vanity Fair Mills, Inc. v. T. Eaton,

of an incumbent head of a Ministry. It creates a legally binding

Co. (234 F. 2d 633), this Court further said:

obligation on the parties founded on the generally accepted

principle of international law of pacta sunt servanda which has

By the same token, the petitioner should be given the same

been adopted as part of the law of our land. (Constitution, Art.

treatment in the Philippines as we make available to our own

II, Sec. 3). The memorandum reminds the Director of Patents

citizens. We are obligated to assure to nationals of 'countries

of his legal duty to obey both law and treaty. It must also be

of the Union' an effective protection against unfair competition

obeyed. (at pp. 389-390, La Chemise Lacoste, S.A. v.

in the same way that they are obligated to similarly protect

Fernandez, supra).

Filipino citizens and firms.

In the case of of Cerverse Rubber Corporation V. Universal Rubber Products,
Pursuant to this obligation, the Ministry of Trade on November

Inc. (174 SCRA 165), we likewise re-aafirmed our adherence to the Paris

20,1980 issued a memorandum addressed to the Director of the

Convention:

Patents Office directing the latter -The ruling in the aforecited case is in consonance with the
xxx xxx xxx

Convention of Converse Rubber Corporation v. Universal Rubber

Products, Inc. (I 47 SCRA 165), we likewise re-affirmed our

... [T]o reject all pending applications for Philippine registration

adherence to the Paris Convention: the Union of Paris for the

of signature and other world famous trademarks by applicants

Protection of Industrial Property to which the Philippines

other than its original owners or users.

became a party on September 27, 1965. Article 8 thereof

provides that 'a trade name [corporation name] shall be

The conflicting claims over internationally known trademarks

protected in all the countries of the Union without the

involve such name brands as Lacoste, Jordache, Gloria

obligation of filing or registration, whether or not it forms part

Vanderbilt, Sasson, Fila, Pierre Cardin, Gucci, Christian Dior,

of the trademark.'

Oscar de la Renta, Calvin Klein, Givenchy, Ralph Lauren,

Geoffrey Beene, Lanvin and Ted Lapidus.

The object of the Convention is to accord a national of a

member nation extensive protection 'against infringement and

It is further directed that, in cases where warranted,

other types of unfair competition [Vanity Fair Mills, Inc. v. T.

Philippine registrants of such trademarks should be asked to

Eaton Co., 234 F. 2d 633]." (at p. 165)

surrender their certificates of registration, if any, to avoid

suits for damages and other legal action by the trademarks'

The mandate of the aforementioned Convention finds

foreign or local owners or original users.

implementation in Section 37 of RA No. 166, otherwise known as

the trademark Law:

action. This phrase should be construed in line with Section 1 of

Rule 2, which defines the word action, thus--

Rights of Foreign Registrants. Persons who are nationals of,

domiciled in, or have a bona fide or effective business or

Action means an ordinary suit in a court of

commercial establishment in any foreign country, which is a

justice by which one party prosecutes another

party to an international convention or treaty relating to marks

for the enforcement or protection of alright,

or tradenames on the represssion of unfair competition to

or the prevention or redress of a wrong. Every

which the Philippines may be party, shall be entitled to the

other remedy is a special proceeding.

benefits and subject to the provisions of this Act ...

It is,therefore,very clear that the Bureau of Land is not
Tradenames of persons described in the first paragraph of this

covered under the aforementioned provisions of the Rules of

section shall be protected without the obligation of filing or

Court. (at p. 851)

registration whether or not they form part of marks.

Thus, the Court of Appeals likewise erred in holding that the requisites of lis
We, therefore, hold that the petitioner had the legal capacity to file the action

pendens were present so as to justify the dismissal of the case below.

below.
As regards the propriety of the issuance of the writ of preliminary injunuction,
Anent the issue of lis pendens as a ground for a motion to dismiss, the petitioner

the records show that herein private respondent was given the opportunity to

submits that the relief prayed for in its civil action is different from the relief

present its counter-evidence against the issuance thereof but it intentionally

sought in the Inter Partes cases. More important, however, is the fact that

refused to do so to be consistent with its theory that the civil case should be

for lis pendens to be a valid ground for the dismissal of a case, the other case

dismissed in the first place.

pending between the same parties and having the same cause must be a court
action. As we have held in Solancho v. Ramos (19 SCRA 848):

Considering the fact that "PUMA" is an internationally known brand name, it is

pertinent to reiterate the directive to lower courts, which equally applies to

As noted above, the defendants contend that the pendency of

administrative agencies, found in La Chemise Lacoste, S.A. v. Fernandez, supra):

an administrative between themselves and the plaintiff before

the Bureau of Lands is a sufficient ground to dismiss the action.

One final point. It is essential that we stress our concern at

On the other hand, the plaintiff, believing that this ground as

the seeming inability of law enforcement officials to stem the

interposed by the defendants is a sufficient ground for the

tide of fake and counterfeit consumer items flooding the

dismissal of his complaint, filed a motion to withdraw his free

Philippine market or exported abroad from our country. The

patent application No. 16649.

greater victim is not so much the manufacturer whose product

is being faked but the Filipino consuming public and in the case

This is not what is contemplated under the law because under

of exportations, our image abroad. No less than the President,

section 1(d), Rule 16 (formerly Rule 8) of the Rules of Court,

in issuing Executive Order No. 913 dated October 7, 1983 to

one of the grounds for the dismissal of an action is that "there

strengthen the powers of the Minister of Trade and Industry

is another action pending between the same parties for the

for the protection of consumers, stated that, among other acts,

same cause." Note that the Rule uses the phrase another

the dumping of substandard, imitated, hazardous, and cheap

goods, the infringement of internationally known tradenames

and trademarks, and the unfair trade Practices of business
firms have reached such proportions as to constitute economic
sabotage. We buy a kitchen appliance, a household tool,
perfume, face powder, other toilet articles, watches, brandy or
whisky, and items of clothing like jeans, T-shirts, neckties, etc.
the list is quite lengthy pay good money relying on the
brand name as guarantee of its quality and genuine nature only
to explode in bitter frustration and helpless anger because the
purchased item turns out to be a shoddy imitation, albeit a
clever looking counterfeit, of the quality product. Judges all
over the country are well advised to remember that court
processes should not be used as instruments to, unwittingly or
otherwise, aid counterfeiters and intellectual pirates, tie the
hands of the law as it seeks to protect the Filipino consuming
public and frustrate executive and administrative
implementation of solemn commitments pursuant to
international conventions and treaties. (at p. 403)
WHEREFORE, the appealed decision of the Court of Appeals dated June 23,
1986 is REVERSED and SET ASIDE and the order of the Regional Trial Court of
Makati is hereby Reinstated.
SO ORDERED.

G.R. No. L-18289

March 31, 1964

surname nor a geographical term, nor any that comes within the purview of
Section 4 of Republic Act No. 166; and that the mark as used by respondent

ANDRES ROMERO, petitioner,

company convincingly shows that it identifies and distinguishes respondent

vs.

company's goods from others."

MAIDEN FORM BRASSIERE CO., INC., and THE DIRECTOR OF

PATENTS, respondents.

On October 17, 1957, respondent Director issued to respondent company a

certificate of registration of with, trademark "Adagio".

Alafriz Law Office for petitioner.

Ross, Selph & Carrascoso for respondent Maiden Form Brassiere Co., Inc.

On February 26, 1958, petitioner filed with respondent Director a petition for

Office of the Solicitor General and Tiburcio S. Evalle for respondent Director

cancellation of said trademark, on the grounds that it is a common descriptive

of Patents.

name of an article or substance on which the patent has expired; that its
registration was obtained fraudulently or contrary to the provisions of Section

BARRERA, J.:

4, Chapter II of Republic Act No. 166; and that the application for its
registration was not filed in accordance with the provisions of Section 37,

From the decision of the Director of Patents (of January 17, 1961) dismissing his

Chapter XI of the same Act. Petitioner also alleged that said trademark has not

petition for cancellation of the registration of the trademark "Adagio" for

become distinctive of respondent company's goods or business; that it has been

brassieres manufactured by respondent Maiden Form Brassiere Co., Inc.,

used by respondent company to classify the goods (the brassieres) manufactured

petitioner Andres Romero, interposed this appeal.

by it, in the same manner as petitioner uses the same; that said trademark has
been used by petitioner for almost 6 years; that it has become a common

On February 12, 1957, respondent company, a foreign corporation, filed with

descriptive name; and that it is not registered in accordance with the

respondent Director of Patents an application for registration (pursuant to

requirements of Section 37(a), Chapter XI of Republic Act No. 166.

Republic Act No. 166) of the trademark "Adagio" for the brassieres
manufactured by it. In its application, respondent company alleged that said

Issues having been joined, the case was heard and, after hearing, respondent

trademark was first used by it in the United States on October 26, 1937, and in

Director (on January 17, 1961) rendered the decision above adverted to.

the Philippines on August 31, 1946; that it had been continuously used by it in
trade in, or with the Philippines for over 10 years; that said trademark "is on the

Petitioner filed a motion for reconsideration of said decision, on the grounds

date of this application, actually used by respondent company on the following

that (1) it is contrary to the evidence, and (2) it is contrary to law. Said motion

goods, classified according to the official classification of goods (Rule 82) -

was denied by respondent Director by resolution of March 7, 1961.

Brassieres, Class 40"; and that said trademark is applied or affixed by

respondent to the goods by placing thereon a woven label on which the trademark

Hence, this appeal.

is shown.
Appellant claims that the trademark "Adagio" has become a common descriptive
Acting on said application, respondent Director, on August 13, 1957, approved for

name of a particular style of brassiere and is, therefore, unregistrable. It is

publication in the Official Gazette said trademark of respondent company, in

urged that said trademark had been used by local brassiere manufacturers since

accordance with Section 7 of Republic Act No. 166 (Trademark Law), having

1948, without objection on the part of respondent company.

found, inter alia, that said trademark is "a fanciful and arbitrary use of a foreign
word adopted by applicant as a trademark for its product; that it is neither a

This claim is without basis in fact. The evidence shows that the trademark

"Adagio" is a musical term, which means slowly or in an easy manner, and was used

article, that fact of itself would destroy a trademark. Arbitrary

as a trademark by the owners thereof (the Rosenthals of Maiden Form Co., New

trademarks cannot become generic in this way. Jacobs v. Beecham, 221

York) because they are musically inclined. Being a musical term, it is used in an

U.S. 263, 31 S. Ct. 555, 55 L. Ed. 729; Coca-Cola Co. v. Koke Co. of

arbitrary (fanciful) sense as a trademark for brassieres manufactured by

American, 254 U.S. 143, 41 S. Ct. 113, 65 L. Ed. 189. (emphasis supplied.)

respondent company. It also appears that respondent company has, likewise,

adopted other musical terms such as "Etude" (Exh. W-2), "Chansonette" (Exh.

Appellant next contends that the trademark "Adagio at the time it was

W-3), "Prelude" (Exh. W-4), "Over-ture" (Exh. W-6), and "Concerto" (Exh. V), to

registered (in the Philippines) on October 17, 1957, had long been used by

identify, as a trademark, the different styles or types of its brassieres. As

respondent company, only "to designate a particular style or quality of brassiere

respondent Director pointed out, "the fact that said mark is used also to

and, therefore, is unregistrable as a trademark. In support of the contention, he

designate a particular style of brassiere, does not affect its registrability as a

alleges that the sentence "Maidenform bras are packaged for your quick

trademark" (Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 USPQ

shopping convenience. For other popular Maidenform styles writ for free style

105).1wph1.t

booklet to: Maiden Form Brassiere Co., Inc 200 Madison Avenue, New York 16,
N.Y." printed on the package (Exh. W), shows that the trademark "Adagio" is

It is not true that respondent company did not object to the use of said

used to designate a particular style or quality of brassiere. He also cites portions

trademark by petitioner and other local brassiere manufacturers. The records

of the testimonies of his witnesses Bautista and Barro, to the effect that said

show that respondent company's agent, Mr. Schwartz, warned the Valleson

trademark refers to the style of brassieres sold in the stores of which they are

Department Store to desist from the sale of the "Adagio" Royal Form brassieres

salesmen.

manufactured by petitioner (t.s.n., pp. 27-28, Oct. 7, 1958), and even placed an
advertisement (Exhs. 3 & 4) in the local newspapers (Manila Daily Bulletin, Manila

This contention is untenable. Said sentence appearing on the package (Exh. W),

Times, Fookien Times, and others) warning the public against unlawful use of said

standing alone, does not conclusively indicate that the trademark "Adagio" is

trademark (t.s.n., p. 15, Aug. 17, 1959). The advertisement (Exh. U) in the Manila

merely a style of brassiere. The testimony of Mr. Schwartz, witness of

Times made by respondent company on February 9, 1958, was brought to

respondent company, belies petitioner's claim:

petitioner's attention (t.s.n., p. 24, Oct. 7, 1958), which must have prompted him
to file this present petition for cancellation, on February 26, 1958.

Q. There is a statement at the bottom of Exhibit W which reads,

'There is a Maidenform for every type of figure'. As you stated you are

On the other hand, respondent company's long and continuous use of the

very familiar with these bras manufacture by Maidenform Brassiere

trademark "Adagio" has not rendered it merely descriptive of the product. In

Company, what are these types of figures this Exhibit W refer to?

Winthrop Chemical Co. v. Blackman (268 NYS 653), it was held that widespread
dissemination does not justify the defendants in the use of the trademark.

A. This is a product sold primarily in the United States they have cold
climate there, and a style to suit the climate and we have different

Veronal has been widely sold in this country by the plaintiff; over

here. This kind of bra very seldom comes here. This type is very

5,250,000 packages have been sold since 1919. This is a consequence of

expensive and sold primarily in the United States. We do not sell it

the long and continued use by the plaintiff of this trademark and is the

here; it is very expensive an import restrictions do not allow our dollar

result of its efforts to inform the profession and the public of its

allocations for such sort.

product. This widespread dissemination does not justify the defendants

in the use of this trademark. If this argument were sound, then every

As to the testimonies of Bautista and Barro, they are me conclusions of said

time a plaintiff obtained the result of having the public purchase its

witnesses. Note that when Bautista was asked why he considered the trademark

"Adagio" as a style, he replied that the brand "Adagio" is attached distinguish

Appellant also claims that respondent Director erred in registering the

the style. He stated as follows:

trademark in question, despite appellee's non-compliance with Section 37,

paragraphs 1 and 4 (a) of Republic Act No. 166.

Q. You said that those bras mentioned by you such as Adagio, Prelude,
Alloette, are styles, will you please tell us the reason why you said that

This contention flows from a misconception of the application for registration of

those are styles?

trademark of respondent. As we see it, respondent's application was filed under

the provisions of Section 2 of Republic Act No. 166 as amended by Section 1 of

A. You know his brand like Adagio, Alloette are just attached to the

Republic Act 865 which reads as follows:

bras just to distinguish the style: It is not the main brand.

"SEC. 2. What are registrable Trademarks, ... own by persons,
Barro, on the other hand, said that "Adagio" is a mark. She declared as follows:

corporations, partnerships or associations domiciled ... in any foreign

country may be registered in accordance with the provisions of this

Q. You state that you used to sell brassieres in the store in which you

Act: Provided, That said trademarks, trade-names, or service marks are

work; when customers come to your store and ask for brassieres, what

actually in use in commerce and services not less than two months in the

do they usually ask from you?

Philippines before the time the applications for registration are

filed: ..."

A. Well, I tell you there are so many types and certain types of people
ask for certain brassiere. There are people who ask for Royal Form

Section 37 of Republic Act No. 166 can be availed of only where the Philippines is

Adagio and there are others who ask for Duchess Ideal Form, and so

a party to an international convention or treaty relating to trademarks, in which

many kinds of marks.

the trade-mark sought to be registered need not be use in the Philippines. The
applicability of Section 37 has been commented on by the Director of Patents, in

Brassieres are usually of different types or styles, and appellee has used

this wise:

different trademarks for every type as shown by its labels, Exhibits W-2
(Etude), W-3 (Chansonette), W-4 (Prelude), W-5 (Maidenette), and W-6,

Trademark rights in the Philippines, without actual use the trademark in

(Overture). The mere fact that appellee uses "Adagio" for one type or style,

this country can, of course, be created artificially by means of a treaty

does not affect the validity of such word as a trademark. In. the case of

or convention with another country or countries. Section 37 of the

Kiekhaefer Corp. v. Willys-Overland Motors, 111 USPQ 105, it was held that the

present Philippine Trademark Law, Republic Act No. 166 (incorporated as

fact that the word "Hurricane" was used to designate only one model of

Rule 82 in the Rules of Practice for Registration of Trademarks)

automobile, did not affect the validity of that word as a trademark. In

envisions the eventual entrance of the Philippines into such convention

Minnesota Mining Co. V. Motloid Co., 74 USPQ 235, the applicant sought to

treaty. It is provided in said section that applications filed thereunder

register the letters "MM" in diagonal relationship within a circle. Applicant

need not allege use in the Philippines of the trade mark sought to be

admitted that this mark was used only for its medium price and medium quality

registered. The Philippines has, however not yet entered into any such

denture-base materials. The Assistant Commissioner of Patents held:

treaty or convention and, until she does, actual use in the Philippines of
the trademark sought to be registered and allegation in the application

It clearly appears, however, that the mark serves to indicate origin of

of such fact, will be required in all applications for original or renewal

applicant's goods; and the fact that it is used on only one of several

registration submitted to the Philippine Patent Office. (Circular Release

types or grades does not affect its registrability as a trade mark.

No. 8.)

Appellant, likewise, contends that the registration the trademark in question was

of non-compliance by appellee of Section 37 of Republic Act No. 166. But we

fraudulent or contrary Section 4 of Republic Act No. 166. There is no evidence

have already shown that Section 37 is not the provision invoked by respondent

to show that the registration of the trademark "Adagio" was obtained

because the Philippines is not as yet a party to any international convention or

fraudulently by appellee. The evidence record shows, on the other hand, that the

treaty relating to trademarks. The case of United Drug Co. v. Rectanus, 248 U.S.

trademark "Adagio" was first exclusively in the Philippines by a appellee in the

90, 39 S. Ct. 48, 63 L. Ed. 141, cited by appellant, is not applicable to the present

year 1932. There being no evidence of use of the mark by others before 1932, or

case, as the records show that appellee was the first user of the trademark in

that appellee abandoned use thereof, the registration of the mark was made in

the Philippines, whereas appellant was the later user. Granting that appellant

accordance with the Trademark Law. Granting that appellant used the mark when

used the trade-mark at the time appellee stopped using it due to government

appellee stopped using it during the period of time that the Government imposed

restrictions on certain importations, such fact did not, as heretofore stated,

restrictions on importation of respondent's brassiere bearing the trademark,

constitute abandonment of the trademark as to entitle anyone to its free use.

such temporary non-use did not affect the rights of appellee because it was
occasioned by government restrictions and was not permanent, intentional, and

Non-use because of legal restrictions is not evidence of an intent to

voluntary.

abandon. Non-use of their ancient trade-mark and the adoption of new

marks by the Carthusian Monks after they had been compelled to leave

To work an abandonment, the disuse must be permanent and not

France was consistent with an intention to retain their right to use their

ephemeral; it must be intentional and voluntary, and not involuntary or

old mark. Abandonment will not be inferred from a disuse over a period

even compulsory. There must be a thorough-going discontinuance of any

of years occasioned by statutory restrictions on the name of liquor.

trade-mark use of the mark in question (Callman, Unfair Competition and

(Nims Unfair Competition and Trade-Mark p. 1269.)

Trademark, 2nd Ed., p. 1341).

IN VIEW OF ALL THE FOREGOING, we are of the opinion and so hold, that
The use of the trademark by other manufacturers did not indicate an intention

respondent Director of Patents did not err in dismissing the present petition for

on the part of appellee to abandon it.

cancellation of the registered trademark of appellee company, and the decision

appealed from is therefore hereby affirmed, with costs against the appellant. So

"The instances of the use by others of the term 'Budweiser, cited by

the defendant, fail, even when liberally construed, to indicate an
intention upon the part of the complainant to abandon its rights to that
name. 'To establish the defense of abandonment, it is necessary to show
not only acts indicating a practical abandonment, but an actual intention
to abandon. Saxlehner v. Eisener & Mendelson Co., 179 U.S. 19, 21 S. Ct.
7 (45 L. Ed. 60).(Anheuser-Busch, Inc. v. Budweiser Malt Products Corp.,
287 F. 245.)
Appellant next argues that respondent Director erred in declaring illegal the
appropriation in the Philippines of the trademark in question by appellant and,
therefore, said appropriation did not affect appellee's right thereto and the
subsequent registration thereof. Appellant urges that its appropriation of the
trademark in question cannot be considered illegal under Philippine laws, because

ordered.

G.R. No. 111580

June 21, 2001

registration of the subject mark and logo. The Developers Group filed an
opposition to the application, which was docketed as Inter Partes Case No. 3529.

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT LTD., SHANGRI-LA

PROPERTIES, INC., MAKATI SHANGRI-LA HOTEL AND RESORT, INC. and

Almost three (3) years later, or on April 15, 1991, the Developers Group

KUOK PHILIPPINE PROPERTIES, INC., petitioners,

instituted with the Regional Trial Court of Quezon City, Branch 99, a complaint

vs.

for infringement and damages with prayer for injunction, docketed as Civil Case

THE COURT OF APPEALS, HON. FELIX M. DE GUZMAN, as Judge, RTC of

No. Q-91-8476, against the Shangri-La Group.

Quezon City, Branch 99 and DEVELOPERS GROUP OF COMPANIES,

On January 8, 1992, the Shangri-La Group moved for the suspension of the

INC., respondents.

proceedings in the infringement case on account of the pendency of the

----------------------------------------

administrative proceedings before the BPTTT.1 This was denied by the trial
court in a Resolution issued on January 16, 1992.2 The Shangri-La Group filed a

G.R. No. 114802

June 21, 2001

Motion for Reconsideration.3Soon thereafter, it also filed a Motion to Inhibit

against Presiding Judge Felix M. de Guzman.4 On July 1, 1992, the trial court

DEVELOPERS GROUP OF COMPANIES, INC., petitioner,

denied both motions.5

vs.
THE COURT OF APPEALS, HON. IGNACIO S. SAPALO, in his capacity as

The Shangri-La Group filed a petition for certiorari before the Court of Appeals,

Director, Bureau of Patents, Trademarks and Technology Transfer, and

docketed as CA-G.R. SP No. 29006.6 On February 15, 1993, the Court of Appeals

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD.,respondents.

rendered its decision dismissing the petition for certiorari. 7The Shangri-La
Group filed a Motion for Reconsideration, which was denied on the ground that

YNARES-SANTIAGO, J.:

the same presented no new matter that warranted consideration.8

On June 21, 1988, the Shangri-La International Hotel Management, Ltd.,

Hence, the instant petition, docketed as G.R. No. 111580, based on the following

Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and Kuok

grounds:

Philippine Properties, Inc. (hereinafter collectively referred as the "Shangri-La

Group"), filed with the Bureau of Patents, Trademarks and Technology Transfer

THE HONORABLE COURT OF APPEALS GRAVELY ABUSED ITS

(BPTTT) a petition, docketed as Inter Partes Case No. 3145, praying for the

DISCRETION AND COMMITTED A REVERSIBLE ERROR IN NOT

cancellation of the registration of the "Shangri-La" mark and "S" device/logo

FINDING THAT:

issued to the Developers Group of Companies, Inc., on the ground that the same
was illegally and fraudulently obtained and appropriated for the latter's

I. THE INFRINGEMENT CASE SHOULD BE DISMISSED OR AT

restaurant business. The Shangri-La Group alleged that it is the legal and

LEAST SUSPENDED; AND

beneficial owners of the subject mark and logo; that it has been using the said
mark and logo for its corporate affairs and business since March 1962 and

II. THE HONORABLE PRESIDING JUDGE SHOULD INHIBIT

caused the same to be specially designed for their international hotels in 1975,

HIMSELF FROM TRYING THE INFRINGEMENT CASE.9

much earlier than the alleged first use thereof by the Developers Group in 1982.
Meanwhile, on October 28, 1991, the Developers Group filed in Inter Partes Case
Likewise, the Shangri-La Group filed with the BPTTT its own application for

No. 3145 an Urgent Motion to Suspend Proceedings, invoking the pendency of the

infringement case it filed before the Regional Trial Court of Quezon City. 10 On

Property Code, provides, as follows

January 10, 1992, the BPTTT, through Director Ignacio S. Sapalo, issued an
Section 151.2. Notwithstanding the foregoing provisions, the court or

Order denying the Motion.11 A Motion for Reconsideration was filed which was,
however, denied in a Resolution dated February 11, 1992.

the administrative agency vested with jurisdiction to hear and

12

adjudicate any action to enforce the rights to a registered mark shall

From the denial by the BPTTT of its Urgent Motion to Suspend Proceedings and

likewise exercise jurisdiction to determine whether the registration of

Motion for Reconsideration, the Developers Group filed with the Court of

said mark may be cancelled in accordance with this Act. The filing of a

Appeals a petition for certiorari, mandamus and prohibition, docketed as CA-G.R.

suit to enforce the registered mark with the proper court or agency

13

SP No. 27742. On March 29, 1994, the Court of Appeals dismissed the petition

shall exclude any other court or agency from assuming jurisdiction over

for lack of merit.14

a subsequently filed petition to cancel the same mark. On the other

hand, the earlier filing of petition to cancel the mark with the
A petition for review was thereafter filed, docketed as G.R. No. 114802, raising

Bureau of Legal Affairs shall not constitute a prejudicial question

the issue of:

that must be resolved before an action to enforce the rights to

same registered mark may be decided. (Emphasis provided)

WHETHER OR NOT, GIVEN THE ESTABLISHED FACTS AND

CIRCUMSTANCES ON RECORD AND THE LAW AND JURISPRUDENCE

Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings,

APPLICABLE TO THE MATTER, THE RESPONDENT COURT ERRED IN

provides to wit

HOLDING THAT, INASMUCH AS BOTH THE CIVIL ACTION AND

THE ADMINISTRATIVE PROCEEDINGS HERE INVOLVED MAY CO-

Section 7. Effect of filing of a suit before the Bureau or with the

EXIST AND THE LAW DOES NOT PROVIDE FOR ANY PREFERENCE

proper court. - The filing of a suit to enforce the registered mark with

BY ONE OVER THE OTHER, THE RESPONDENT DIRECTOR HAD

the proper court or Bureau shall exclude any other court or agency from

JURISDICTION TO RULE AS HE DID AND HAD NOT INCURRED ANY

assuming jurisdiction over a subsequently filed petition to cancel the

GRAVE ABUSE OF DISCRETION CORRECTIBLE BY THE

same mark. On the other hand, the earlier filing of petition to cancel

EXTRAORDINARY REMEDIES OF CERTIORARI, PROHIBITION AND

the mark with the Bureau shall not constitute a prejudicial question

MANDAMUS.15

that must be resolved before an action to enforce the rights to

same registered mark may be decided.(Emphasis provided)

On February 2, 1998, G.R. Nos. 111580 and 114802 were ordered consolidated.
Hence, as applied in the case at bar, the earlier institution of an Inter Partes
The core issue is simply whether, despite the institution of an Inter Partes case

case by the Shangri-La Group for the cancellation of the "Shangri-La" mark and

for cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs,

"S" device/logo with the BPTTT cannot effectively bar the subsequent filing of

Intellectual Property Office) by one party, the adverse party can file a

an infringement case by registrant Developers Group. The law and the rules are

subsequent action for infringement with the regular courts of justice in

explicit.

connection with the same registered mark.

The rationale is plain: Certificate of Registration No. 31904, upon which the
We rule in the affirmative.

infringement case is based, remains valid and subsisting for as long as it has not
been cancelled by the Bureau or by an infringement court. As such, Developers

Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual

Group's Certificate of Registration in the principal register continues as "prima

facie evidence of the validity of the registration, the registrant's ownership of

technical matters. This rule, evidently, did not escape the appellate

the mark or trade-name, and of the registrant's exclusive right to use the same

court for it likewise decreed that for "good cause shown, the lower

in connection with the goods, business or services specified in the

court, in its sound discretion, may suspend the action pending outcome

16

certificate." Since the certificate still subsists, Developers Group may thus file

of the cancellation proceedings" before the BPTTT.

a corresponding infringement suit and recover damages from any person who
However, while the instant Petitions have been pending with this Court, the

infringes upon the former's rights.17

infringement court rendered a Decision, dated March 8, 1996, in Civil Case No.
Furthermore, the issue raised before the BPTTT is quite different from that

Q-91-8476,19 the dispositive portion of which reads:

raised in the trial court. The issue raised before the BPTTT was whether the
mark registered by Developers Group is subject to cancellation, as the Shangri-

WHEREFORE, judgment is hereby rendered in favor of plaintiff

La Group claims prior ownership of the disputed mark. On the other hand, the

Developers Group of Companies, Inc. and against defendants Shangri-La

issue raised before the trial court was whether the Shangri-La Group infringed

International Hotel Management, Ltd., Shangri-La Properties, Inc.,

upon the rights of Developers Group within the contemplation of Section 22 of

Makati Shangri-La Hotel and Resort, Inc., and Kuok Philippine

Republic Act 166.

Properties, Inc.

The case of Conrad and Company, Inc. v. Court of Appeals18 is in point. We

a) Upholding the validity of the registration of the service mark

held:

"Shangri-La" and "S-Logo" in the name of plaintiff;

We cannot see any error in the above disquisition. It might be

b) Declaring defendants' use of said mark and logo as an infringement of

mentioned that while an application for the

plaintiff's right thereto;

administrative cancellation of a registered trademark on any of the

grounds enumerated in Section 17 of Republic Act No. 166, as amended,

c) Ordering defendants, their representatives, agents, licensees,

otherwise known as the Trade-Mark Law, falls under the exclusive

assignees and other persons acting under their authority and with their

cognizance of BPTTT (Sec. 19, Trade-Mark Law), an action, however, for

permission, to permanently cease and desist from using and/or

infringement or unfair competition, as well as the remedy of injunction

continuing to use said mark and logo, or any copy, reproduction or

and relief for damages, is explicitly and unquestionably within the

colorable imitation thereof, in the promotion, advertisement, rendition

competence and jurisdiction of ordinary courts.

of their hotel and allied projects and services or in any other manner
whatsoever;

xxx

xxx

xxx
d) Ordering defendants to remove said mark and logo from any

Surely, an application with BPTTT for an administrative cancellation of a

premises, objects, materials and paraphernalia used by them and/or

registered trade mark cannot per se have the effect of restraining or

destroy any and all prints, signs, advertisements or other materials

preventing the courts from the exercise of their lawfully conferred

bearing said mark and logo in their possession and/or under their

jurisdiction. A contrary rule would unduly expand the doctrine of

control; and

primary jurisdiction which, simply expressed, would merely behoove

regular courts, in controversies involving specialized disputes, to defer

e) Ordering defendants, jointly and severally, to indemnify plaintiff in

to the findings or resolutions of administrative tribunals on certain

the amounts of P2,000,000.00 as actual and compensatory damages,

P500,000.00 as attorney's fees and expenses of litigation.

With the decision of the Regional Trial Court upholding the validity of the
registration of the service mark "Shangri-La" and "S" logo in the name of

Let a copy of this Decision be certified to the Director, Bureau of

Developers Group, the cancellation case filed with the Bureau hence becomes

Patents, Trademarks and Technology Transfer, for his information and

moot. To allow the Bureau to proceed with the cancellation case would lead to a

appropriate action in accordance with the provisions of Section 25,

possible result contradictory to that which the Regional Trial Court has

Republic Act No. 166.

rendered, albeit the same is still on appeal. Such a situation is certainly not in
accord with the orderly administration of justice. In any event, the Court of

Costs against defendants.

Appeals has the competence and jurisdiction to resolve the merits of the said
RTC decision.

SO ORDERED.20
We are not unmindful of the fact that in G.R. No. 114802, the only issue
The said Decision is now on appeal with respondent Court of Appeals. 21
Following both law and the jurisprudence enunciated in Conrad and Company, Inc.

v. Court of Appeals,22 the infringement case can and should proceed

submitted for resolution is the correctness of the Court of Appeals' decision

sustaining the BPTTT's denial of the motion to suspend the proceedings before
it. Yet, to provide a judicious resolution of the issues at hand, we find
it apropos to order the suspension of the proceedings before the Bureau pending

independently from the cancellation case with the Bureau so as to afford the

final determination of the infringement case, where the issue of the validity of

owner of certificates of registration redress and injunctive writs. In the same

the registration of the subject trademark and logo in the name of Developers

light, so must the cancellation case with the BPTTT (now the Bureau of Legal

Group was passed upon.

Affairs, Intellectual Property Office) continue independently from the

infringement case so as to determine whether a registered mark may ultimately

WHEREFORE, in view of the foregoing, judgment is hereby rendered dismissing

be cancelled. However, the Regional Trial Court, in granting redress in favor of

G.R. No. 111580 for being moot and academic, and ordering the Bureau of Legal

Developers Group, went further and upheld the validity and preference of the

Affairs, Intellectual Property Office, to suspend further proceedings in Inter

latter's registration over that of the Shangri-La Group.

Partes Case No. 3145, to await the final outcome of the appeal in Civil Case No.
Q-91-8476.1wphi1.nt

There can be no denying that the infringement court may validly pass upon the
right of registration. Section 161 of Republic Act No. 8293 provides to wit
SEC. 161. Authority to Determine Right to Registration In any action

involving a registered mark the court may determine the right to

registration, order the cancellation of the registration, in whole or
in part, and otherwise rectify the register with respect to the
registration of any party to the action in the exercise of
this. Judgement and orders shall be certified by the court to the
Director, who shall make appropriate entry upon the records of the
Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a).
(Emphasis provided)

SO ORDERED.

G.R. No. L-23035 July 31, 1975

registration thereof" for the reason that it (Standard Brands) is the owner of
the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of

PHILIPPINE NUT INDUSTRY, INC., petitioner,

Registration No. SR-172, issued by the Patent Office on July 28, 1958. Standard

vs.

Brands alleged in its petition that Philippine Nut's trademark "PHILIPPINE

STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as

PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to

Director of Patents, respondents.

its trademark "PLANTERS COCKTAIL PEANUTS" used also on salted peanuts,

and that the registration of the former is likely to deceive the buying public and

Perfecta E. De Vera for petitioner.

cause damage to it.

Paredes, Poblador, Cruz and Nazareno for private respondent.

On June 1, 1962, Philippine Nut filed its answer invoking the special defense that
its registered label is not confusingly similar to that of Standard Brands as the

Office of the Solicitor General Arturo A. Alafriz, Acting Assistant Solicitor

latter alleges.

General Isidro C. Borromeo and Solicitor Francisco J. Bautista for respondent

Director.

At the hearing of October 4, 1962, the parties submitted a partial stipulation of

facts. On December 12, 1962, an amended partial stipulation of facts was
submitted, the pertinent agreements contained in which are: (1) that Standard

MUNOZ PALMA, J.:

Challenged in this petition for review is the decision of respondent Director of
Patents which orders the cancellation of Certificate of Registration No. SR-416
issued in favor of herein petitioner Philippine Nut Industry, Inc. (hereinafter
called Philippine Nut) for the trademark "PHILIPPINE PLANTERS CORDIAL

Brands is the present owner of the trademark "PLANTERS COCKTAIL

PEANUTS" covered by Certificate of Registration No. SR-172 issued on July 28,
1958; (2) that Standard Brands trademark was first used in commerce in the
Philippines in December, 1938 and (3) that Philippine Nut's trademark
"PHILIPPINE PLANTERS CORDIAL PEANUTS" was first used in the Philippines
on December 20, 1958 and registered with the Patent Office on August 10, 1961.

PEANUTS," upon complaint of Standard Brands Inc. (hereinafter to be called

On December 10, 1963, after the presentation of oral and documentary evidence

Standard Brands).

and the filing by the parties of their memoranda, respondent Director of Patents

The records of the case show the following incidents:

Philippine Nut, a domestic corporation, obtained from the Patent Office on
August 10, 1961, Certificate of Registration No. SR-416 covering the trademark
"PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its product of
salted peanuts.
On May 14, 1962, Standard Brands a foreign corporation, 1 filed with the
Director of Patents Inter Partes Case No. 268 asking for the cancellation of
Philippine Nut's certificate of registration on the ground that "the registrant
was not entitled to register the mark at the time of its application for

rendered Decision No. 281 giving due course to Standard Brand's petition and
ordering the cancellation of Philippine Nut's Certificate of Registration No. SR416. The Director of Patents found and held that in the labels using the two
trademarks in question, the dominant part is the word "Planters", displayed "in a
very similar manner" so much so that "as to appearance and general impression"
there is "a very confusing similarity," and he concluded that Philippine Nut "was
not entitled to register the mark at the time of its filing the application for
registration" as Standard Brands will be damaged by the registration of the
same. Its motion for reconsideration having been denied, Philippine Nut came up
to this Court for a review of said decision.
In seeking a reversal of the decision of respondent Director of Patents,

petitioner brings forth eleven assigned errors all of which revolve around one

Sec. 22.Infringement, what constitutes. Any person who shall

main issue: is the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"

use, without the consent of the registrant, any reproduction,

used by Philippine Nut on its label for salted peanuts confusingly similar to the

counterfeit, copy or colorable imitation of any registered mark

trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its

or trade-name in connection with the sale, offering for sale, or

product so as to constitute an infringement of the latter's trademark rights and

advertising of any goods, business or services on or in

justify its cancellation?

connection with which such use is likely to cause confusion or

mistake or to deceive purchasers or others as to the source

The applicable law to the case is found in Republic Act 166 otherwise known as

or origin of such goods or services , or identity of such business;

the Trade-Mark Law from which We quote the following pertinent provisions:

or reproduce, counterfeit, copy or colorably imitate any such

mark or trade-name and apply such reproduction, counterfeit,

Chapter II-A.

copy, or colorable imitation to labels, signs, prints, packages,

wrappers, receptacles or advertisements intended to be used
Sec. 4.Registration of trade-marks, trade-names and service-

upon or in connection with such goods, business or services,

marks on the principal register. There is hereby established

shall be liable to a civil action by the registrant for any or all of

a register of trade-marks, trade-names and service-marks

the remedies herein provided. (emphasis supplied).

which shall be known as the principal register. The owner of a

trade-mark, trade-name or service-mark used to distinguish his

In the cases involving infringement of trademark brought before the Court it

goods, business or services from the goods, business or services

has been consistently held that there is infringement of trademark when the use

of others shall have the right to register the same on the

of the mark involved would be likely to cause confusion or mistake in the mind of

principal register, unless it:

the public or to deceive purchasers as to the origin or source of the commodity;

that whether or not a trademark causes confusion and is likely to deceive the

(d) Consists of or comprises a mark or trade-name which so

public is a question of fact which is to be resolved by applying the "test of

resembles a mark or trade-nameregistered in the Philippines or

dominancy", meaning, if the competing trademark contains the main or essential

a mark or trade-name previously used in the Philippines by

or dominant features of another by reason of which confusion and deception are

anotherand not abandoned, as to be likely, when applied to or

likely to result, then infringement takes pIace; that duplication or imitation is

used in connection with the goods, business or services of the

not necessary, a similarity in the dominant features of the trademarks would be

applicant, to cause confusion or mistake or to deceive

sufficient. 3

purchasers; ... (emphasis Ours)

1. The first argument advanced by petitioner which We believe goes to the core
Sec. 17. Grounds for cancellation Any person, who believes

of the matter in litigation is that the Director of Patents erred in holding that

that he is or will be damaged by the registration of a mark or

the dominant portion of the label of Standard Brands in its cans of salted

trade-name, may, upon the payment of the prescribed fee, apply

peanuts consists of the word PLANTERS which has been used in the label of

to cancel said registration upon any of the following grounds:

Philippine Nut for its own product. According to petitioner, PLANTERS cannot be
considered as the dominant feature of the trademarks in question because it is a

(c) That the registration was obtained fraudulently or contrary

mere descriptive term, an ordinary word which is defined in Webster

to the provisions of section four, Chapter II hereof; ....

International Dictionary as "one who or that which plants or sows, a farmer or an

agriculturist." (pp. 10-11, petitioner's brief)

We find the argument without merit. While it is true that PLANTERS is an

not only on the fact that petitioner herein adopted the same dominant mark of

ordinary word, nevertheless it is used in the labels not to describe the nature of

Standard Brands, that is, the word PLANTERS, but that it also used in its label

the product, but to project the source or origin of the salted peanuts contained

the same coloring scheme of gold, blue, and white, and basically the same lay-out

in the cans. The word PLANTERS printed across the upper portion of the label in

of words such as "salted peanuts" and "vacuum packed" with similar type and size

bold letters easily attracts and catches the eye of the ordinary consumer and it

of lettering as appearing in Standard Brands' own trademark, all of which result

is that word and none other that sticks in his mind when he thinks of salted

in a confusing similarity between the two labels. 4 Thus, the decision states:

peanuts.

"Furthermore, as to appearance and general impression of the two trademarks, I

find a very confusing similarity." (Emphasis supplied) 5

In cases of this nature there can be no better evidence as to what is the

dominant feature of a label and as to whether there is a confusing similarity in

Referring again to the picture We have reproduced, the striking similarity

the contesting trademarks than the labels themselves. A visual and graphic

between the two labels is quite evident not only in the common use of PLANTERS

presentation of the labels will constitute the best argument for one or the

but also in the other words employed. As a matter of fact, the capital letter "C"

other, hence, we are reproducing hereunder a picture of the cans of salted

of petitioner's "Cordial" is alike to the capital "C" of Standard's "Cocktail", with

peanuts of the parties to the case.

both words ending with an "1".

The picture below is part of the documentary evidence appearing in the original

Admittedly, no producer or manufacturer may have a monopoly of any color

records, and it clearly demonstrates the correctness of the finding of

scheme or form of words in a label. But when a competitor adopts a distinctive or

respondent Director that the word PLANTERS is the dominant, striking mark of

dominant mark or feature of another's trademark and with it makes use of the

the labels in question.

same color ensemble, employs similar words written in a style, type and size of
lettering almost identical with those found in the other trademark, the intent to

It is true that there are other words used such as "Cordial" in petitioner's can

pass to the public his product as that of the other is quite obvious. Hence, there

and "Cocktail" in Standard Brands', which are also prominently displayed, but

is good reason for Standard Brands' to ask why did petitioner herein use the

these words are mere adjectives describing the type of peanuts in the labeled

word PLANTERS, the same coloring scheme, even almost identical size and

containers and are not sufficient to warn the unwary customer that the two

contour of the cans, the same lay-out of words on its label when there is a

products come form distinct sources. As a whole it is the word PLANTERS which

myriad of other words, colors, phrases, symbols, and arrangements to choose

draws the attention of the buyer and leads him to conclude that the salted

from to distinguish its product from Standard Brands, if petitioner was not

peanuts contained in the two cans originate from one and the same manufacturer.

motivated to simulate the label of the latter for its own can of salted peanuts,

In fact, when a housewife sends her housemaid to the market to buy canned

and thereby deceive the public?

salted peanuts, she will describe the brand she wants by using the word
PLANTERS and not "Cordial" nor "Cocktail".

A similar question was asked by this Court in Clarke vs. Manila Candy Co., 36 Phil.
100, when it resolved in favor of plaintiff a case of unfair competition based on

2. The next argument of petitioner is that respondent Director should not have

an imitation of Clarke's packages and wrappers of its candies the main feature

based his decision simply on the use of the term PLANTERS, and that what he

of which was one rooster. The Court queried thus: "... why, with all the birds in

should have resolved is whether there is a confusing similarity in the trademarks

the air, and all the fishes in the sea, and all the animals on the face of the earth

of the parties.

to choose from, the defendant company (Manila Candy Co.) selected two roosters
as its trademark, although its directors and managers must have been well aware

It is quite obvious from the record, that respondent Director's decision is based

of the long-continued use of a rooster by the plaintiff with the sale and

advertisement of its goods? ... A cat, a dog, a carabao, a shark or an eagle

differences exist, these pale into insignificance in the face of an evident

stamped upon the container in which candies are sold would serve as well as a

similarity in the dominant feature and overall appearance of the labels of the

rooster for purposes of identification as the product of defendant's factory.

parties.

Why did defendant select two roosters as its trademark ?" (p.109, supra)
It is not necessary, to constitute trademark "infringement",
Petitioner contends, however, that there are differences between the two

that every word of a trade-mark should be appropriated, but it

trademarks, such as, the presence of the word "Philippine" above PLANTERS on

is sufficient that enough be taken to deceive the public in the

its label, and other phrases, to wit: "For Quality and Price, Its Your Outstanding

purchase of a protected article. (Bunte Bros. v. Standard

Buy", the address of the manufacturer in Quezon City, etc., plus a pictorial

Chocolates, D.C. Mass., 45 F. Supp. 478, 481)

representation of peanuts overflowing from a tin can, while in the label of

Standard Brands it is stated that the product is manufactured in San Francisco,

A trade-name in order to be an `infringement' upon another

California, and on top of the tin can is printed "Mr. Peanut" and the

need not be exactly like it in form and sound, but it is enough if

representation of a "humanized peanut". (pp. 30-33, petitioner's brief)

the one so resembles another as to deceive or mislead persons

of ordinary caution into the belief that they are dealing with

We have taken note of those alleged differences but We find them insignificant

the one concern when in fact they are dealing with the other.

in the sense that they are not sufficient to call the attention of the ordinary

(Foss v. Culbertson, 136 P. 2d 711, 718, 17 Wash. 2d 610)

buyer that the labeled cans come from distinct and separate sources. The word
"Philippine" printed in small type in petitioner's label may simply give to the

Where a trade-mark contains a dominating or distinguishing

purchaser the impression that that particular can of PLANTERS salted peanuts

word, and purchasing public has come to know and designate the

is locally produced or canned but that what he is buying is still PLANTERS

article by such dominating word, the use of such word by

canned salted peanuts and nothing else. As regards "Mr. Peanut" on Standard

another in marking similar goods may constitute Infringement

Brands' label, the same appears on the top cover and is not visible when the cans

though the marks aside from such dominating word may be

are displayed on the shelves, aside from the fact that the figure of "Mr. Peanut"

dissimilar. (Queen Mfg. Co. v. lsaac Ginsberg & Bros., C.C.A.

is printed on the tin cover which is thrown away after opening the can, leaving no

Mon., 25 F. 2d 284, 287)

lasting impression on the consumer. It is also for this reason that We do not
agree with petitioner that it is "Mr. Peanut and the Humanized Peanut" which is

(d) "Infringement" of trade-mark does not depend on the use

the trademark of Standard Brands salted peanuts, it being a mere descriptive

of identical words, nor on the question whether they are so

pictorial representation of a peanut not prominently displayed on the very body

similar that a person looking at one would be deceived into the

of the label covering the can, unlike the term PLANTERS which dominates the

belief that it was the other; it being sufficient if one mark is so

label.

like another in form, spelling, or sound that one with not a very
definite or clear recollection as to the real mark is likely to be

It is correctly observed by respondent Director that the merchandize or goods

confused or misled. (Northam Warren Corporation v. Universal

being sold by the parties herein are very ordinary commodities purchased by the

Cosmetic Co., C. C. A; III., 18 F. 2d 774, 775)

average person and many times by the ignorant and unlettered 6 and these are
the persons who will not as a rule examine the printed small letterings on the

3. What is next submitted by petitioner is that it was error for respondent

container but will simply be guided by the presence of the striking mark

Director to have enjoined it from using PLANTERS in the absence of evidence

PLANTERS on the label. Differences there will always be, but whatever

showing that the term has acquired secondary meaning. Petitioner, invoking

American jurisprudence, asserts that the first user of a tradename composed of

The applicability of the doctrine of secondary meaning to the situation now

common words is given no special preference unless it is shown that such words

before Us is appropriate because there is oral and documentary evidence

have acquired secondary meaning, and this, respondent Standard Brands failed to

showing that the word PLANTERS has been used by and closely associated with

do when no evidence was presented to establish that fact. (pp. 14-16,

Standard Brands for its canned salted peanuts since 1938 in this country. Not

petitioner's brief)

only is that fact admitted by petitioner in the amended stipulation of facts (see
p. 2 of this Decision), but the matter has been established by testimonial (tsn

The doctrine of secondary meaning is found in Sec. 4 (f), Chapter II-A of the

October 4, 1962, pp. 2-8) and documentary evidence consisting of invoices

Trade-Mark Law, viz:

covering the sale of "PLANTERS cocktail peanuts". (Exhibits C to C-4; D to D-10;

E to E-10; F to F-2) In other words, there is evidence to show that the term

Except as expressly excluded in paragraphs (a), (b), (c) and (d)

PLANTERS has become a distinctive mark or symbol insofar as salted peanuts

of this section, nothing herein shall prevent the registration of

are concerned, and by priority of use dating as far back as 1938, respondent

a mark or trade-name used by the applicant which has become

Standard Brands has acquired a preferential right to its adoption as its

distinctive of the applicant's goods, business or services. The

trademark warranting protection against its usurpation by another. Ubi jus ibi

Director may accept as prima facie evidence that the mark or

remedium. Where there is a right there is a remedy. Standard Brands has shown

trade-name has become distinctive, as applied to or used in

the existence of a property right(Arce Sons & Co. vs. Selecta Biscuit Co., Inc.,

connection with the applicant's goods, business or services,

supra, pp. 262-263) and respondent Director, has afforded the remedy.

proof of substantially exclusive and continuous use thereof as a

mark or trade-name by the applicant in connection with the sale

Still on this point, petitioner contends that Standard Brands' use of the

of goods, business or services for the five years next preceding

trademark PLANTERS was interrupted during the Japanese occupation and in

the date of the filing of the application for its registration. (As

fact was discontinued when the importation of peanuts was prohibited by Central

amended by Sec. 3, Rep. Act No. 638.)

Bank regulations effective July 1, 1953, hence it cannot be presumed that it has
acquired a secondary meaning. We hold otherwise. Respondent Director correctly

This Court held that the doctrine is to the effect that a word or phrase

applied the rule that non-use of a trademark on an article of merchandize due to

originally incapable of exclusive appropriation with reference to an article on the

legal restrictions or circumstances beyond one's control is not to be considered

market, because geographically or otherwise descriptive, might nevertheless

as an abandonment.

have been used so long and so exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the word
or phrase has come to mean that the article was his product.

In the case of Andres Romero vs. Maiden Form Brassiere Co., Inc ., L-18289,
March 31, 1964, 10 SCRA 556, the same question was raised by petitioner
Romero when he filed with the Bureau of Patents a petition to cancel the

By way of illustration, is the word "Selecta" which according to this Court is a

registration of the trademark "Adagio" for brassieres manufactured by Maiden

common ordinary term in the sense that it may be used or employed by any one in

Form Brassiere Co., Inc. His petition having been dismissed by the Director of

promoting his business or enterprise, but which once adopted or coined in

Patents, Romero appealed to this Court and one of the issues posed by him was

connection with one's business as an emblem, sign or device to characterize its

that when the Government imposed restrictions on importations of brassieres

products, or as a badge of authenticity, may acquire a secondary meaning as to

bearing that particular trademark, there was abandonment of the same by

be exclusively associated with its products and business, so that its use by

respondent company which entitled petitioner to adopt it for his own use and

another may lead to confusion in trade and cause damage to its business.

which in fact he had been using for a number of years. That argument was met
by the Court in the words of Justice Jesus Barrera thus:

... The evidence on record shows, on the other hand, that the

Non-use because of legal restrictions is not evidence of an

trademark "Adagio" was first used exlusively in the Philippines

intent to abandon. Non-use of their ancient trade-mark and the

by appellee in the year 1932. There being no evidence of use of

adoption of new marks by the Carthusian Monks after they had

the mark by others before 1932, or that appellee abandoned

been compelled to leave France was consistent with an intention

use thereof, the registration of the mark was made in

to retain their right to use their old mark. Abandonment will

accordance with the Trademark Law. Granting that appellant

not be inferred from a disuse over a period of years occasioned

used the mark when appellee stopped using it during the period

by statutory restrictions on the name of liquor. (Nims, Unfair

of time that the Government imposed restrictions on

Competition and Trade-Mark, p. 1269.) (pp. 562-564, supra)

importation of respondent's brassiere being the trademark,

(emphasis Ours)

such temporary non-use did not affect the rights of appellee

because it was occasioned by government restrictions and was

Applying the words of Justice Roman Ozaeta in the "Ang Tibay" case (Ang vs.

not permanent, intentional, and voluntary.

Toribio Teodoro, p. 56, supra) to the case now before Us, petitioner herein must
not be allowed to get a free ride on the reputation and selling power of Standard

To work an abandonment, the disuse must be

Brands PLANTERS salted peanuts, for a self-respecting person, or a reputable

permanent and not ephemeral; it must, be

business concern as is the case here, does not remain in the shelter of another's

intentional and voluntary, and not involuntary

popularity and goodwill but builds one of his own.

or even compulsory. There must be a

thoroughgoing discontinuance of any trade-

4. Findings of fact by the Director of Patents are conclusive and binding on this

mark use of the mark in question (Callman,

Court provided they are supported by substantial evidence. 9 The testimonial and

Unfair Competition and Trademark, 2nd Ed., p.

documentary evidence in addition to the stipulation of facts submitted by the

1341).1wph1.t

parties fully support the findings of respondent Director that(1) there is a

confusing similarity between the labels or trademarks of Philippine Nut and

The use of the trademark by other manufacturers did not

Standard Brands used in their respective canned salted peanuts; (2) respondent

indicate an intention on the part of appellee to abandon it.

Standard Brands has priority of adoption and use of the label with PLANTERS as
the dominant feature and the same has acquired secondary meaning in relation to

The instances of the use by others of the term Budweiser,

salted peanuts; and (3) there has been no abandonment or non-use of said

cited by the defendant, fail, even when liberally construed, to

trademark by Standard Brands which would justify its adoption by petitioner or

indicate an intention upon the part of the complainant to

any other competitor for the sale of salted peanuts in the market.

abandon its rights to that name. "To establish the defense of

abandonment, it is necessary to show not only acts indicating a

PREMISES CONSIDERED, We AFFIRM the decision of respondent Director of

practical abandonment, but an actual intention to abandon."

Patents with costs against petitioner.

Sanlehner v. Eisener & Mendelson Co., 179 U.S. 19, 21 S. Ct. 7

(45 L. Ed. 6.0).(Anheuser-Busch, Inc, v. Budweiser Malt

So Ordered.

Products Corp., 287 F. 245.)

xxx xxx xxx

Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent
Office on August 10, 1961, a certificate covering the trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS," the label used on its product of salted
peanuts.

On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the
Director of Patent, asking for the cancellation of Philippine Nut's certificate of
registration on the ground that "the registrant was not entitled to register the
mark at the time of its application for registration thereof" for the reason that
it (Standard Brands) is the owner of the trademark "PLANTERS COCKTAIL
PEANUTS" covered by Certificate of Registration No. SR-172, issued by the
Patent Office on July 28, 1958.
Thereafter, the Philippine Nut filed its answer invoking the special defense that
its registered label is not confusingly similar to that of Standard Brands as the
latter alleges.
Respondent Director of Patents gave due course to Standard Brand's petition,
ordering the cancellation of Philippine Nut's Certificate of Registration.
Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a
review, seeking the reversal of the Director of Patents decision.
Issue:
Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"
used by Philippine Nut on its label for salted peanuts with the same coloring
scheme and the same lay-out of words, confusingly similar to the trademark
"PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product.
Ruling:
Yes. As to appearance and general impression of the two trademarks, the
Supreme Court said it found a very confusing similarity.
The word PLANTERS printed across the upper portion of the label in bold
letters easily attracts and catches the eye of the ordinary consumer and it is
that word and none other that sticks in his mind when he thinks of salted
peanuts.

G.R. No. L-19531

August 10, 1967

THE CLOROX COMPANY, petitioner,

vs.
THE DIRECTOR OF PATENTS and GO SIU GIAN, respondents.

Luchauco, Picazo and Agcaoli for petitioner.

Gonzalo A. Tejada for respondent Go Siu Gian.
Office of the Solicitor General for respondent Director of Patents.
ANGELES, J.:
We have before us petition to review the order of the Director of Patents in
"inter Partes Case No. 204," dated January 6, 1961, dismissing the opposition of
the Clorox Company to the registration of the trade-mark "OLDROX" in the
name of Go Siu Gian, and the resolution of said Official, dated February 12,
1962, denying the Clorox Company's motion and petition for relief from said
order.1wph1.t
The facts of the case, either appearing in the record or admitted by the parties
in their pleadings, are as follows:
On April 7, 1959, respondent Go Siu Gian filed with the Patent Office an
application for registration of the trademark "OLDROX," with an accompanying
statement that he is a citizen of China, residing and doing business in the
Philippines at 838 Folgueras St., Manila; that he has adopted the trademark
"OLDROX" for his goods (whitening agent for bleaching) in trade and commerce
in the country; and that said trademark, shown on printed labels affixed to the
goods, or to the containers thereof, has been used by him since February 1,

The Supreme Court also held that although it is true that no producer or
manufacturer may have a monopoly of any color scheme or form of words in a
label, but when a competitor adopts a distinctive or dominant mark or feature of
another's trademark and with it makes use of the same color ensemble, employs
similar words written in a style, type and size of lettering almost identical with
those found in the other trademark, the intent to pass to the public his product
as that of the other is quite obvious. It deceives the public.

1959. The application was allowed and published in the issue of the Official

Hence, the decision of respondent Director of Patents was affirmed.

Company, herein petitioner.

Gazette dated April 25, 1960, which was released for circulation on August 22,
1960.
On September 21 of the same year, or within 30 days from the date of its
publication in the Official Gazette, an unverified opposition to the application
was filed by the law firm Lichauco, Picazo and Agcaoili in behalf of the Clorox

On January 6, 1961, respondent Director of Patents issued the order appealed

respondent official to have dismissed the opposition, it appearing in an

from, dismissing the petitioner's opposition to the application upon the ground,

indubitable manner that a verified opposition was timely filed. The Director of

which is stated in said order, that the Clorox Company failed to filed the

Patents, on the other hand, maintains that the verified opposition cannot be

required verified notice of opposition within the period allowed by law. Upon

considered as having been filed on time, for the reason that it was misfiled in

notice of the said order, petitioner's counsel filed a motion with the Patent

the record of another opposition case through the negligence of its own counsel.

Office, dated January 10, 1961, advising that it has filed the verified notice of
opposition on time, i.e., on November 16, 1960; although it also admitted that the

Section 8 of Republic Act No. 166 requires that an opposition to an application

covering letter of said verified opposition was given another case number (Inter

for registration of a trademark should be filed within 30 days from the

Partes Case No. 200, entitled "The Shell Company of the Philippines versus

publication of the application in the Official Gazette. This requirement is

Faustino Co") which is also handled by the same counsel in the Patent Office.

relaxed under Rule 187 (c) of the Revised Rules of Practice in Trademark Cases

Petitioner requested in that motion that the verified opposition be detached

which provide as follows:

from the record of Inter Partes Case No. 200 and to transfer the same in the
corresponding file of this case. The motion was opposed by herein respondent Go

Rule 187 (c). Notice filed by attorney. An unverified notice of

Siu Gian.

opposition may be filed by a duly authorized attorney, but such

opposition will be null and void unless verified by the opposer in person

Before the motion could be acted upon by the Director of Patents, petitioner

within sixty days after such filing. . . .

filed on January 26, 1961, a petition for relief from the order dismissing its
opposition, alleging circumstances constituting mistake or excusable negligence

There is no question that petitioner's counsel filed an unverified notice of

of its counsel and his employee which led to the misfiling of its verified

opposition to the application for registration of the trademark "OLDROX" within

opposition, and praying that said order of January 6, 1961, be set aside.

30 days from the date of its publication in the Official Gazette. There is no
disagreement also that the record of the case shows that an unverified

After due consideration of the arguments of both parties relative to the

opposition was filed, and it was for this reason that the order of January 8,

aforesaid motion and petition for relief from the order of January 6, 1961, the

1961, was issued, because the law requires that for an opposition to be valid, it

Director of Patents issued the resolution of February 12, 1962, also appealed

must be verified. It is not disputed, however, that immediately after it received

from, denying both the motion and the petition for relief, and ordering the

the notice of dismissal of its opposition, petitioner, in due time, filed a motion

issuance of the Certificate of Registration of the trademark "OLDROX" in the

dated January 10, 1961, advising the Director of Patents that its verified

name of Go Siu Gian. The Clorox Company has come to Us on Appeal.

opposition was filed on time, although it admitted its error in submitting it under
a covering letter designating another opposition case. Under the circumstances,

In a nutshell, the various errors pointed out in the petitioner's brief which were

it is our considered opinion that the verified opposition mentioned was filed on

allegedly committed by the respondent Director of Patents in issuing the order

time, although it was submitted under an erroneous covering letter. That fact

and resolution appealed from, really boil down to two main propositions, namely:

alone is no argument to the proposition that a pleading "misfiled" is a pleading

(1) that the Director of Patents erred in dismissing its opposition to the

"not filed." A covering letter is not part of the pleading. What is important is the

registration of the trademark in question, on the ground of failure to file the

fact that the pleading reached the official designated by law to receive it within

required "verified" opposition on time; and (2) that said Official erred in denying

the prescribed time, regardless of the mistake in the indorsement or covering

altogether its motion and petition for relief from said order.

letter which is not a necessary element of filing. It is the duty of the clerk of
court to receive and file the necessary papers of a case in their corresponding

Under the first proposition, the petitioner argues that it was error for the

files. It is gross negligence on the part of a clerk of court to receive and file

pleadings in the record of a case by relying upon a letter of submittal or covering

final, in the sense that the party in whose favor they are rendered is entitled as

letter without bothering to examine whether or not the pleading or document

of right, to have execution thereon, but prior thereto, the courts have plenary

submitted corresponds to the enclosure mentioned in the letter. And when, as in

control over the proceedings including the judgment, and in the exercise of a

this case, the pleading is misfiled in the record of another case through the

sound judicial discretion, may take such proper action in this regard as truth and

fault of its clerk, it can not be said that the papers were not filed. It is

justice may require (Arnedo vs. Llorente and Liongson, 18 Phil. 257). The order of

admitted in this case that the verified opposition of herein petitioner was lodged

herein respondent dismissing the opposition of petitioner to the registration of

with the proper official authorized to receive. Under the circumstances, we hold,

the trademark in question may amount to considerable injustice to the opposer

that there was substantial compliance with the requirement of the law.

Clorox Company, the order having been entered not upon the merits of the
controversy; and the possibility of such serious consequences necessitates a

As a second proposition, petitioner contends that the Director of Patents erred

careful examination of the grounds upon which it requests that the order be set

in denying its motion and petition for relief from the order of January 6, 1961,

aside. It must be remembered that the only discretion conferred upon officers

dismissing its opposition to the registration of the trademark in question. It

is a legal discretion, and when anything is left to any officer to be done

holds the view that said Official should have set aside the order and given due

according to his discretion, the law intends it to be done with a sound discretion

course to its opposition.

and according to law (Coombs vs. Santos, 24 Phil. 446). And when, as in this case,
the allegation of the pleading clearly show circumstances constituting mistake

The respondents, on the other hand, argue that the petition for relief filed by

and excusable negligence which are grounds for a motion for reconsideration of

petitioner before the order dismissing the opposition became final was

the order in question, a dismissal of the motion and a denial of the relief sought

premature and may not be legally considered for purposes of setting aside said

upon the flimsy excuse that the same was filed as a petition for relief, will

order. This is being too technical about it. The rule is always in favor of liberality

amount to an abuse of that discretion. Neither may we consider the argument of

in construction so that the real matter in dispute may be submitted to the

herein respondent that the petitioner is not totally deprived of its right to

judgment of the court. Imperfections of form and technicalities of procedure

question the registration of the trademark in question because it may still

should be disregarded unless substantial rights would otherwise be prejudiced

pursue a cancellation proceeding under Sections 17 to 19 of Republic Act No.

(Gaspar vs. Dorado, et al., G.R. No. L-17884, November 29, 1965). It should be

166, and Rules 191 to 197 of the Rules of Practice in Trademark Cases. The

noted that the grounds of fraud, accident, mistake or excusable negligence for

opposition to a registration and the petition for cancellation are alternative

new trial are substantially similar to the grounds of a petition for relief under

proceedings which a party may avail of according to his purposes, needs, and

the Rules; the only difference being that a motion for new trial or for

predicaments (Anchor Trading Company vs. Director of Patents, G.R. No. L-8004,

reconsideration is filed before the order or judgment becomes final, while a

May 30, 1956), and herein petitioner has the right to choose which remedy it

petition for relief should be filed after the finality of the judgment or order,

deems best for the protection of its rights.

but within the periods prescribed in Section 3 of Rule 38. Had herein
respondents so minded, the petition for relief filed by the petitioner in this

Wherefore and considering all the foregoing, the order and resolution of the

case, having been filed before the finality of the order dismissing its opposition,

Director of Patents appealed from are hereby set aside, and the case remanded

could have been treated as a motion. for reconsideration of the order of January

to the Patent Office for further proceedings. Costs against the private

6, 1961, and having been previously apprised of the fact that the verified

respondent.

opposition in this case was misfiled in the record of another case, should have
set aside said order. The rule is well settled that courts may vacate judgments
and grant new trials or enter new judgments on the grounds of error in fact or in
law. They have no power, of course, to vacate judgments after they have become

G.R. No. 78298 January 30, 1989

WOLVERINE WORLDWIDE, INC., petitioner,
vs.
HONORABLE COURT OF APPEALS and LOLITO P. CRUZ, respondents.

K. V. Faylona & Associates for petitioner.

Florencio Z. Sioson for private respondent Lolito P. Cruz.

SARMIENTO, J.:
The subject of this petition for review is the resolution of the Court of
Appeals 1 granting the private respondents's motion for reconsideration and
reviving the decision of the Director of Patents which ordered the dismissal, on
the ground of res judicata, of Inter Partes Case No. 807 instituted by the
petitioner herein.
On February 8, 1984, the petitioner, a foreign corporation organized and existing
under the laws of the United States, brought a petition before the Philippine
Patent Office, docketed as Inter Partes Case No. 1807, for the cancellation of
Certificate of Registration No. 24986-B of the trademark HUSH PUPPIES and
DOG DEVICE issued to the private respondent, a Filipino citizen.
In support of its petition for cancellation, the petitioner alleged, inter alia, that
it is the registrant of the internationally known trademark HUSH PUPPIES and
the DEVICE of a Dog in the United States and in other countries which are
members of the Paris Convention for the Protection of Industrial Property; that
the goods sold by the private respondent, on the one hand, and by the petitioner,
on the other hand, belong to the same class such that the private respondent's
use of the same trademark in the Philippines (which is a member of said Paris
Convention) in connection with the goods he sells constitutes an act of unfair
competition, as denied in the Paris Convention.
Subsequently, the private respondent moved to dismiss the petition on the

ground of res judicata, averring that in 1973, or more than ten years before this

May 3, 1983 to the herein Respondent-Registrant, Lolito P.

petition (Inter Partes Case No. 1807) was filed, the same petitioner filed two

Cruz, for the trademark "HUSH PUPPIES" for use on shoes is,

petitions for cancellation (Inter Partes Cases Nos. 700 and 701) and was a party

as it is hereby, declared valid and subsisting for the duration of

to an interference proceeding (Inter Partes Case No. 709), all of which involved

its term unless owner cancelled in accordance with law.

the trademark HUSH PUPPIES and DEVICE, before the Philippine Patent Office.
The Director of Patents had ruled in all three inter parties cases in favor of

On appeal, the Court of Appeals at first set aside the Director's

Ramon Angeles, the private respondent's predecessor-in-interest, to wit:

decision; 5 however, upon reconsideration the latter was revived.

The principal legal question raised in this petition for review is whether or not

WHEREFORE, for all the foregoing considerations,

the present petition for cancellation (Inter Partes Case No. 1807) is barred
1. The petitions seeking cancellation of Registration Nos. SR-

by res judicata in the light of the final and executory decision in Inter Partes

1099 and SR-1526, respectively, are both denied and

Cases Nos. 700 701, and 709.

accordingly DISMISSED;
We rule in the affirmative.
2. Respondent-Registrant/Junior Party-Applicant, Roman
Angeles, is hereby adjudged as the prior user and adopter of

The Court has repeatedly held that for a judgment to be a bar to a subsequent

the trademark HUSH PUPPIES & DEVICE, under Appl. Serial

case, the following requisites must concur: (1) it must be a final judgment; (2)

No. 17174, and therefore, the same given due course; and

the court which rendered it had jurisdiction over the subject matter and the
parties; (3) it must be a judgment on the merits; and (4) there must be Identity

3. Registration No. 14969 of Dexter Sales Company, assignor to

between the two cases, as to parties, subject matter, and cause of action.

Wolverine Worldwide, Inc., covering the trademark HUSH

Contrary to the petitioner's assertion, the judgment in Inter Partes Cases Nos.

PUPPIES & Representation of a Dogie Head, is hereby

CANCELLED.

700, 701, and 709 had long since become final and executory. That Sec. 17 of

Republic Act 166, also known as the Trademark Law, allows the cancellation of a
On June 29, 1979, the Court of Appeals affirmed tile above decision, finding the
same to be in accordance with law and supported by substantial evidence.

registered trademark is not a valid premise for the petitioner's proposition that
a decision granting registration of a trademark cannot be imbued with the
character of absolute finality as is required in res judicata. A judgment or order

In the present case, after both parties had submitted their respective

is final, as to give it the authority of res judicata, if it can no longer be modified

memoranda, the Director of Patents rendered the questioned decision (in Inter

by the court issuing it or by any other court. 8 In the case at bar, the decision of

Partes Case No. 1807), the dispositive portion of which states:

the Court of Appeals affirming that of the Director of Patents, in the

cancellation cases filed in 1973, was never appealed to us. Consequently, when

WHEREFORE, in view of the foregoing considerations this

the period to appeal from the Court of Appeals to this Court lapsed, with no

Office is constrained to hold that Respondent's Motion to

appeal having been perfected, the foregoing judgment denying cancellation of

Dismiss be, as it is hereby, GRANTED and that the subject

registration in the name of private respondent's predecessor-in-interest but

Petition for Cancellation be, as it is hereby DISMISSED.

ordering cancellation of registration in the name of the petitioner's

predecessor-in-interest, became the settled law in the case. In the words of the

Accordingly, Certificate of Registration No. 24986-B issued on

Court of Appeals:

The subsequent failure of appellant-oppositor to elevate the

As regards the subject matter, all of these cases refer to the cancellation of

decision of the Court of Appeals, which affirmed the ruling of

registration of the trademark HUSH PUPPIES and DEVICE of a Dog.

the Director of Patents, to the Supreme Court, sounded the

death knell of appellant-oppositor's instant case. Having

Finally, there is identity of cause of action, which is the alleged wrongful or

become final and executory, the decision in Case No. 967 now

erroneous registration of the trademark.

bars the prosecution of the present action under the principle

of res judicata.

It is argued, however, that res judicata does not apply in this particular instance

because when the May 9, 1977 decision was handed down by the Director of
Patents, Executive Order No. 913 dated October 7, 1983 and the resulting

It must be stressed anew that, generally, the fundamental principle of res

judicata applies to all cases and proceedings in whatever form they may be.

10

We

memorandum of Minister Roberto Ongpin dated October 25, 1983 had not yet

now expressly affirm that this principle applies, in the appropriate cases, to

been issued. (The validity of this memorandum was later upheld by this Court in

proceedings for cancellation of trademarks before the Philippine Patent Office

La Chemise Lacoste, S.A. vs. Fernandez and Sujanani vs. Ongpin).

(now Bureau of Patents, Trademarks and Technology Transfer). In Ipekjan

petitioner underscores the following specific directive contained in the

Merchandising Co., Inc. vs Court of Tax Appeals, we said:

abovementioned memorandum of Minister Ongpin for the Director of Patents:

12

The

To say that the doctrine applies exclusively to decisions

5. All pending applications for Philippine registration of

rendered by what are usually understood as courts would be to

signature and other world famous trademarks filed by

unreasonably circumscribe the scope thereof. The more

applicants other than their original owners or users shall be

equitable attitude is to allow extension of the defense to

rejected forthwith. Where such applicants have already

decisions of bodies upon whom judicial powers have been

obtained registration contrary to the abovementioned PARIS

conferred.

11

CONVENTION and/or Philippine Law, they shall be directed to

surrender their Certificates of Registration to the Philippine

Undoubtedly, final decisions, orders, and resolutions, of the Director of Patents

Patent Office for immediate cancellation proceedings.

13

are clothed with a judicial character as they are, in fact, reviewable by the
Court of Appeals and by us.

It is thus contended that despite the previous grant of registration to the

private respondent, the present petition for cancellation could still be brought,

The subject judgment is undeniably on the merits of the case, rendered after

and the same should be granted by the Director of Patents, pursuant to the

both parties and actually submitted their evidence.

abovequoted clause. Stated otherwise, the petitioner suggests that the petition
is not barred by res judicatabecause while the former petitions were filed under

Between the earlier petitions and the present one there is substantial identity

Republic Act 166, the present one was brought pursuant to the cited

of parties, subject matter, and cause of action.

memorandum which expressly sanctions the cancellation of registration of a

trademark granted even prior to the same memorandum.

The petitioner in all of these cases is Wolverine Worldwide, Inc. The

respondent-registrant in this case is the assignee of Randelson Agro-Industrial

In the first place, the subject memorandum never amended, nor was it meant to

Development, Inc. (formerly known as Randelson Shoes, Inc.) which in turn,

amend, the Trademark Law. It did not indicate a new policy with respect to the

acquired its right from Ramon Angeles, the original respondents-registrant.

registration in the Philippines of world-famous trademarks. The protection

against unfair competition, and other benefits, accorded to owners of

internationally known marks, as mandated by the Paris Convention, is already

practice would be clearly violative of the time-honored doctrine of res

Thus, the subject memorandum, as well

judicata. The present petition for cancellation raises basically the same issue of

as Executive Order No. 913, merely reiterated the policy already existing at the

ownership of the trademark HUSH PUPPIES, which issue was already discussed

time of its issuance. As accurately enunciated by the Court of Appeals:

and settled in Inter Partes Cases Nos. 700, 701, and 709. As pointed out by the

guaranteed under the Trademark Law.

14

private respondent, the petitioner itself expressly recognized the issue of

Such being the case, appellant-oppositor could have properly

ownership when in the brief it filed in the Court of Appeals it included the

ventilated the issue of whether or not it fell within the

following in the assignment of errors:

protective ambit of the Paris Convention in the previous

proceedings which culminated in the registration of the Hush

That the Philippine Patent Office erred in holding that respondent-appellee has

Puppies trademark in appellee-movant's name, i.e., in Case No.

established prior use and adoption of the trademark HUSH PUPPIES and is

967 before the Philippine Patent Office. The Director of

the true and lawful owner thereof, instead of petitioner-appellant herein.

Patents in that case, after hearing both parties and thereafter,

(Emphasis supplied).

17

deciding that appellee-movant was entitled to the registration

of the trademark in its name, must have concluded that

The aforesaid cases, involving as they were the registration of a trademark,

appellant-oppositor had not established the fact that it was

necessarily litigated the issue of ownership of such trademark because

entitled to the application of the favorable provision; of the

ownership is, indeed, the basis of registration of a trademark.

Paris Convention.

18

Thus, Section 4

of R.A. 166 provides: ". . . The owner of a trademark, trade name or service-mark

15

used to distinguish his goods, business or services from the goods, business or
Furthermore, we agree with the conclusion of the Court of Appeals that the

services of others shall have the right to register the same on the principal

memorandum discussed here is subject to the doctrine of res judicata. The same

register. . . " Res judicata now bars the petitioner from reopening, by way of

memorandum has, in the words of the Court of Appeals:

another petition for cancellation (the present Inter Partes Case No. 1807), the
issue of ownership of the trademark HUSH PUPPIES. Otherwise, there will

... no room for application where the oppositor previously availed

never be an end to litigation.

of the same remedy to contest and cancel the registration of

subject trademark but did not prevail, against the same
registrant regarding the same subject matter (the trademark
in question) and for the same cause of action. This is the more
so when, as in this present controversy, the certificate of
registration, cancellation of which is sought anew, was issued by
the Patent office after due hearing in the prior appropriate
inter partes case, pursuant to a decision of the Director of
Patents which was affirmed on appeal by the Court of Appeals,
and has become final and executory.

16

In the same light, the repeated filing of petitions for cancellation founded on
substantially the same ground as provided in Sec. 17 of the Trademark Law, we
rule, is not permissible. For to allow without any limitation whatsoever such a

WHEREFORE, the petition for review is DENIED.

G.R. No. 132993

June 29, 2005

petition for cancellation of Certificate of Registration No. 53918 (for "LIVES")

and Inter Partes Case No. 4217, a petition for cancellation of Certificate of

LEVI STRAUSS (PHILS.), INC., petitioner,

Registration No. 8868 (for "LIVES" Label Mark).

vs.
VOGUE TRADERS CLOTHING COMPANY, respondent.

Petitioner then applied for the issuance of a search warrant on the premises of
respondent Vogue Traders Clothing Company, owned by one Tony Lim, with the

DECISION

Regional Trial Court of Manila, Branch 3. On December 12, 1995, said trial court
issued Search Warrant No. 95-75714 and Search Warrant No. 95-75815 based on

AZCUNA, J.:

its finding of probable cause that the respondent had violated Article 189 of the
Revised Penal Code16 in manufacturing, selling, and incorporating designs or marks

This is a petition for review on certiorari seeking to annul the decision1 of the

in its jeans which were confusingly similar to petitioners "LEVIs jeans." These

Court of Appeals, dated August 13, 1997, which annulled and set aside the

search warrants commanded the seizure of certain goods bearing copies or

orders,2 dated December 10, 1996 and April 11, 1997, issued by the Regional

imitations of the trademarks which belonged to petitioner. 17 On December 13,

Trial Court of Manila, Branch 1 and which directed the trial court to desist from

1995, the search warrants were enforced and several goods belonging to

proceeding with the said case until the Bureau of Patents, Trademarks and

respondent were seized.18 Meanwhile, it appears that criminal charges were filed

Technology Transfer (BPTTT) has finally resolved Inter PartesCases Nos. 4216

against Tony Lim of respondent company in the Department of Justice, 19 but the

and 4217, and the resolution of the Court of Appeals, dated March 5, 1998,

same were eventually dismissed and the search warrants were quashed.

denying petitioners motion for reconsideration.

Consequently, on February 1, 1996, respondent filed a complaint 20 for damages in
The factual antecedents are as follows:

the Regional Trial Court of Manila, Branch 50, against petitioner. The complaint
alleged that since January 1, 1988, respondent, through Antonio Sevilla, with

In 1972, per "Trademark, Technical Data, and Technical Assistance

3

business address at 1082 Carmen Planas Street, Tondo, Manila, had been a lawful

Agreement," Levi Strauss & Co., the principal based in Delaware, United States

assignee and authorized user of: (a) the trademark "LIVES" under Certificate of

of America, granted petitioner Levi Strauss (Phils.) a non-exclusive license to use

Registration No. 53918 issued by the BPTTT, (b) the trademark "LIVES LABEL

LEVIS trademark, design, and name in the manufacturing, marketing,

MARK" under Certificate of Registration No. SR 8868 issued by the BPTTT, and

distribution, and sale of its clothing and other goods. 4 The licensing agreement

(c) the copyright registrations of "LIVES ORIGINAL JEANS," its pocket

was renewed several times, the recent one being under Certificate of

design, and hand tag; that the goods, articles, and effects seized from

Registration No. 1379-A. Levi Strauss & Co. obtained certificates of

respondents establishment were manufactured and used in its legitimate

registration from the BPTTT for the following trademarks: "LEVIS" 6; "501"7;

business of manufacturing and selling of the duly registered trademark "LIVES"

"Two Horse Design"8; "Two Horse Label"9; "Two Horse Patch"10; "Two Horse Label

and "LIVES ORIGINAL JEANS;" and that the trademarks of respondent did not

with Patterned Arcuate Design"11; "Arcuate Design"12; and the composite

have any deceptive resemblance with the trademarks of petitioner. Respondent

trademarks,13 namely, "Arcuate," "Tab," and "Two Horse Patch."

sought to recover the seized assorted sewing materials, equipment, and finished

Petitioner discovered the existence of some trademark registrations belonging

to respondent which, in its view, were confusingly similar to its trademarks.
Thus, it instituted two cases before the BPTTT for the cancellation of
respondents trademark registrations, to wit: Inter Partes Case No. 4216, a

products or the value thereof, in case the same had been destroyed or impaired
as a result of the seizure. Respondent also prayed that, after due trial, judgment
be rendered ordering the petitioner to pay compensatory damages ofP320,000
with an additional amount of damages of P11,000 per day until the seized
properties are restored;P2,000,000 as exemplary damages; P100,000 for

attorneys fees with an additional amount of P100,000 in the event of an appeal

Co./LSPIs Arcuate trademark which was first used by LS & Co. worldwide in

plus P1,500 per court appearance and the costs of the suit.

1873 and the Philippines Registration of which is based on LS & Co.s US

Certificate of Registration No. 404243, issued on November 16, 1943. Thus, no

21

In its amended answer with counterclaim, petitioner countered that

rights attendant to a copyright can ever attach to plaintiffs infringing

respondents LIVES brand infringed upon its licensed brand name LEVIS. It

backpocket design.

sought to cancel respondents Copyright Registration No. I-3838 and enjoin the
respondent from further manufacturing, selling, offering for sale, and

Also, it could not have been pure chance or coincidence that plaintiffs LIVES

advertising the denim jeans or slacks by using a design substantially, if not

jeans use a trademark, symbol or design which is substantially, if not exactly

exactly similar to, or a colorable imitation of the trademarks

22

of petitioner.

similar to, or a colorable imitation of LS & CO./LSPI trademarks, since there is a

practically limitless array of other marks, words, numbers, devices, symbols and

Upon manifestation/motion

23

by petitioner, the RTC of Manila, Branch 50 issued

designs which plaintiff could have used on its products to identify and

an order dated May 9, 1996,24forwarding the case to the Executive Judge (RTC

distinguish them from those of defendant and other manufacturers. All told,

of Manila, Branch 23) for re-raffle among the courts designated as Special

from the mass of evidence adduced, plaintiffs intent to appropriate, copy, and

Courts to try and decide cases involving violations of Intellectual Property Rights

slavishly imitate the genuine appearance of authentic LEVIs jeans and pass off

pursuant to Administrative Order No. 113-95, dated October 2, 1995. On May

its LIVEs jeans as genuine LEVIS jeans in much too stark.

17, 1996, Branch 23 issued an order

25

directing that the case be forwarded to

Branch 1 (a designated Special Court per said administrative order) for further

As above-discussed, through more than a centurys use and continuous

proceedings.

substantial promotions and advertising of the LEVIs TRADEMARKS on its

products on jeans and trousers in particular LS & Co. has cultivated, gained

On the scheduled hearing on December 4, 1996 in the RTC of Manila, Branch 1,

and established an invaluable goodwill in its name "LEVIs STRAUSS &

respondent (as therein plaintiff) failed to appear. Upon motion of petitioner, the

COMPANY" and in the products which carry such name and the LEVIs

trial court declared respondent to have waived its right to present evidence to

TRADEMARKS. Hence, unless plaintiff is immediately enjoined from further

controvert petitioners application for a writ of preliminary injunction.

26

manufacturing, selling, offering for sale and advertising denims, jeans or slacks
using a design substantially, if not exactly similar to, or a colorable imitation of

In an order dated December 10, 1996, the trial court found that the respondent

the LS & Co./LSPI trademarks, it will continue to have a free ride on, and erode

intended to appropriate, copy, and slavishly imitate the genuine appearance of

such invaluable goodwill and reputation by the mere effortless expedient of

authentic LEVIs jeans and pass off its LIVEs jeans as genuine LEVIs jeans.

imitating the overall visual impression of genuine LEVIs JEANS on its own

Thus,

designs, employing minute points of distinction sufficient to muddle the overall

conclusion which is actually generated, but do not dispel the similitude between

In opposing defendants application for preliminary in injunction, plaintiff alleges

the trademarks. Well has been said that the most successful form of copying is

that it has obtained Certificates of Registration for the trademarks "LIVE[]S,"

to employ enough points of similarity to confuse the public with enough points of

"LIVE[]S LABEL MARK," ["]LIVE[]S ORIGINAL JEANS["] as well as the patch

difference to confuse the court. [(]Del Monte Corporation vs. Court of Appeals,

pocket design and hand tag. It did not, however, present any evidence to support

181 SCRA 418[)].

the same.
There is no question that the above-discussed circumstances call for the
In any event, plaintiffs backpocket design is not copyrightable, as it is neither

intervention of equity to prevent further irreparable harm to defendants

an original work nor a novel design. Rather it is a copy or slavish imitation of LS &

goodwill and reputation. In consonance with Section 3 (a), (b) and (c), Rule 58 of

the Rules, defendant is thus entitled to the ancillary relief demanded either for

and damages does not amount to forum-shopping in that the elements

a limited period or perpetually.

of litis pendentia which form the basis for a charge for forum-shopping
are not all present in the instant case;

Corollarily, defendant is hereby directed to execute a bond to the party

enjoined to the effect that defendant will pay to plaintiff all damages it may

(4) That the injunctive order sought to be reconsidered, by its very

sustain by reason of the injunction if the court should finally decide that

nature, is merely provisional and does not dispose of the case on the

defendant is not entitled thereto.

merits. Hence, it would not amount to a prejudgment considering that

the defendant still has the burden of proving during trial on the merits

WHEREFORE, upon the filing of a bond in the sum of FIVE HUNDRED

that it is entitled to protection and that confusion does, in fact, or

THOUSAND PESOS (P500,000.00), let a writ of preliminary injunction issue

likely to exist, and, on the other hand, plaintiff would have its

restraining plaintiff, its officers, employees, agents, representatives, dealers,

opportunity to prove that confusion does not exist or is not likely to

retailers or assigns from manufacturing, distributing, selling, offering for sale,

happen; and

advertising or otherwise using denims or jeans with a design which is

substantially, if not exactly similar to defendants trademarks.

(5) That the evidence on record justifies the injunctive relief granted
by this court in favor of defendant.

Meanwhile, the hearing on the main cause of action is hereby set on February 5
and 12, 1997, both at 9:00 a.m.

WHEREFORE, in view of all the foregoing, plaintiffs motion for reconsideration

and supplemental motion for reconsideration are DENIED for lack of merit.

SO ORDERED.27
SO ORDERED.28
On motion for reconsideration, respondent prayed that the petitioners
counterclaim be dismissed and that the order dated December 10, 1996, be set

Respondent took the matter to the Court of Appeals. On August 13, 1997, the

aside. In an order dated April 11, 1997, the trial court denied the motion, stating

Court of Appeals rendered a decision in favor of the respondent, enjoining the

that:

trial court from further proceeding with the case. The dispositive portion
thereof reads:

Considering:
WHEREFORE, the petition is GRANTED. The assailed Orders dated December
(1) That the defendants application for injunctive relief was properly

10, 1996 and April 11, 1997 are annulled and set aside for having been issued with

directed against the real property in interest, the self-proclaimed

grave abuse of discretion and in excess of jurisdiction. Respondent court is

lawful assignee and authorized user of the subject trademarks, hence,

ordered to desist from proceeding with Civil Case No. 96-76944, entitled "Vogue

the party who would be benefited or injured by this courts final

Traders Clothing Company, Plaintiff, versus Levi Strauss (Phil.), Inc.,

decision on the application;

Defendant.", until the Bureau of Patents, Trademarks and Technology Transfer

has finally resolved Inter Partes Cases Nos. 4216 and 4217.

(2) That the acts which plaintiff was enjoined from doing are within the
scope of the reliefs demanded by defendant;

No costs.

(3) That the institution of defendants counterclaim for infringement

SO ORDERED.29

After its motion for reconsideration was denied, petitioner filed the present

that it did not commit forum-shopping when it filed its counterclaim for

petition for review on certiorari, raising the following assignment of errors:

infringement (to the petitioners complaint for damages in the Regional Trial
Court of Manila, Branch 1 Civil Case No. 96-76944) as the causes of action in

the said civil case and the two inter partes cases (Inter Partes Cases Nos. 4216
and 4217 pending before the BPTTT) are different and do not involve the same

THE COURT OF APPEALS COMMITTED CLEARLY REVERSIBLE ERROR IN

subject matter and issues, it erred in applying the "doctrine of primary

HOLDING THAT THE DOCTRINE OF PRIMARY JURISDICTION OPERATES

jurisdiction." The appeals court declared that the trial court never had the

TO SUSPEND ANY AND ALL PROCEEDINGS IN CIVIL CASE NO. 96-76944,

authority to hear and grant petitioners prayer for injunctive relief nor to

PARTICULARLY THE ABILITY OF THE TRIAL COURT TO ISSUE

proceed with the hearing of the case in view of the pendency of the two inter

PRELIMINARY INJUNCTIVE RELIEF, AND THAT THE TRIAL COURT JUDGE

partes cases.

THEREFORE COMMITTED ABUSE OF DISCRETION IN GRANTING SUCH

RELIEF.

Petitioner is a holder of Certificate of Registration No. 1379-A for its Levis

trademarks. The registration gives rise to a presumption of its validity and the
II

right to the exclusive use of the same. As set forth in Section 17 of Republic
Act (R.A.) No. 166 or "The Trademark Law," an entity having a duly registered

THE COURT OF APPEALS ERRED IN FAILING TO HOLD THAT THE

trademark can file a suit against another entity for the protection of its right:

CERTIFICATION AGAINST FORUM-SHOPPING ATTACHED BY RESPONDENT

TO ITS PETITION FOR CERTIORARI AND PROHIBITION IS FATALLY

Sec. 17.Grounds for cancellation. Any person, who believes that he is or will be

DEFECTIVE.

damaged by the registration of a mark or trade-name, may, upon the payment of

the prescribed fee, apply to cancel said registration upon any of the following
III

grounds:

THE COURT OF APPEALS ERRED IN HOLDING THAT THE TRIAL COURT

(a) That the registered mark or trade-name becomes the common

JUDGE COMMITTED GRAVE ABUSE OF DISCRETION IN DECLARING

descriptive name of an article or substance on which the patent has

RESPONDENT TO HAVE WAIVED ITS RIGHT TO ADDUCE EVIDENCE TO

expired;

COUNTER PETITIONERS EVIDENCE IN SUPPORT OF ITS APPLICATION

FOR PRELIMINARY INJUNCTIVE RELIEF.
IV

(b) That it has been abandoned;

(c) That the registration was obtained fraudulently or contrary to the
provisions of section four, Chapter II hereof;

THE COURT OF APPEALS ERRED IN HOLDING THAT THE PRELIMINARY

INJUNCTIVE ORDER ISSUED IN CIVIL CASE NO. 96-76944 PREJUDGES

(d) That the registered mark or trade-name has been assigned, and is

THE CASE.30

being used by, or with the permission of, the assignee, so as to

misrepresent the source of the goods, business or services in connection

The petition has merit.

with which the mark or trade-name is used; or

First. Petitioner points out that while the Court of Appeals categorically stated

(e) That cancellation is authorized by other provisions of this Act.

Section 27 thereof states that the proper Regional Trial Court shall have

to enforce the rights to a registered mark shall likewise exercise jurisdiction to

jurisdiction over the damage suits.

determine whether the registration of said mark may be cancelled in accordance

with this Act. The filing of a suit to enforce the registered mark with the

In Conrad and Company, Inc. v. Court of Appeals, as reiterated in the case

proper court or agency shall exclude any other court or agency from assuming

of Shangri-La International Hotel Management Ltd. v. Court of Appeals ,32 the

jurisdiction over a subsequently filed petition to cancel the same mark. On the

Court clarified that while an administrative cancellation of a registered

other hand, the earlier filing of petition to cancel the mark with the Bureau of

trademark, on any of the grounds under Section 17 of R.A. No. 166, is within the

Legal Affairs {formerly BPTTT] shall not constitute a prejudicial question that

ambit of the BPTTT, an action for infringement or any other incidental remedy

must be resolved before an action to enforce the rights to same registered mark

sought is within the jurisdiction of the ordinary courts. Thus,

may be decided. (Sec. 17, R.A. No. 166a)

. . . It might be mentioned that while an application for the

Section 156.Actions, and Damages and Injunction for Infringement. 156.1 The

administrative cancellation of a registered trademark on any of the grounds

owner of a registered mark may recover damages from any person who infringes

enumerated in Section 17 of Republic Act No. 166, as amended, otherwise known

his rights, and the measure of the damages suffered shall be either the

as the Trade-Mark Law, falls under the exclusive cognizance of BPTTT (Sec. 19,

reasonable profit which the complaining party would have made, had the

Trade-Mark Law), an action, however, for infringement or unfair competition, as

defendant not infringed his rights, or the profit which the defendant actually

well as the remedy of injunction and relief for damages, is explicitly and

made out of the infringement, or in the event such measure of damages cannot

unquestionably within the competence and jurisdiction of ordinary courts.

be readily ascertained with reasonable certainty, then the court may award as

31

damages a reasonable percentage based upon the amount of gross sales of the
...

defendant or the value of the services in connection with which the mark or
trade name was used in the infringement of the rights of the complaining party

Surely, an application with BPTTT for an administrative cancellation of a

(Sec. 23, first par., R.A. No. 166a).

registered trade mark cannot per se have the effect of restraining or

preventing the courts from the exercise of their lawfully conferred jurisdiction.

156.2 On application of the complainant, the court may impound during the

A contrary rule would unduly expand the doctrine of primary jurisdiction which,

pendency of the action, sales invoices and other documents evidencing sales. (n)

simply expressed, would merely behoove regular courts, in controversies involving

specialized disputes, to defer to the findings or resolutions of administrative

156.3. In cases where actual intent to mislead the public or to defraud the

tribunals on certain technical matters. This rule, evidently, did not escape the

complainant is shown, in the discretion of the court, the damages may be

appellate court for it likewise decreed that for "good cause shown, the lower

doubled. (Sec. 23, first par., R.A. No. 166)

court, in its sound discretion, may suspend the action pending outcome of the
cancellation proceedings" before BPTTT. (Underscoring supplied.)

156.4 The complainant, upon proper showing, may also be granted injunction.
(Sec. 23, second par., R.A. No. 166a)

The passage of Republic Act No. 8293, otherwise known as the "Intellectual
Property Code of the Philippines,"33expanded the rights accorded to an owner of

Section 161. Authority to Determine Right to Registration. In any action

a registered trademark. Sections 151 (2), 156, and 161 thereof state:

involving a registered mark, the court may determine the right to registration,
order the cancellation of a registration, in whole or in part, and otherwise

Section 151.2. Notwithstanding the foregoing provisions, the court or the

rectify the register with respect to the registration of any party to the action

administrative agency vested with jurisdiction to hear and adjudicate any action

in the exercise of this. Judgment and orders shall be certified by the court to

the Director, who shall make appropriate entry upon the records of the Bureau,

for certiorari even if it was the latters counsel, Atty. Danilo A. Soriano, not one

and shall be controlled thereby (Sec. 25, R.A. No. 166a).

of its duly authorized officers, who executed the certification of non-forum

shopping.

Sections 155 (2), 156, and 163 of the said law further provide for the remedy of
an owner of a registered mark to institute an action for infringement or damages

Section 5, Rule 7 of the Rules of Civil Procedure incorporating Administrative

against a person or entity that may reproduce, counterfeit, copy or colorably

Circular Nos. 28-91 (effective January 1, 1992) and 04-94 (effective April 1,

imitate a registered mark or a dominant feature thereof and apply such

1994) states the requirement of a plaintiff or petitioner to include in his

reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,

initiatory pleading or petition a certification of non-forum shopping. Thus,

packages, wrappers, receptacles or advertisements intended to be used in

commerce upon or in connection with the sale, offering for sale, distribution, or

Sec. 5.Certification against forum shopping. The plaintiff or principal party

advertising of goods or services on or in connection with which such use is likely

shall certify under oath in the complaint or other initiatory pleading asserting a

to cause confusion, or to cause mistake, or to deceive.

claim for relief, or in a sworn certification annexed thereto and simultaneously

filed therewith: (a) that he has not theretofore commenced any action or filed

Finally, Rule 8, Section 7 of the Regulations on Inter Partes Proceedings,

any claim involving the same issues in any court, tribunal or quasi-judicial agency

provides:

and, to the best of his knowledge, no such other action or claim is pending
therein; (b) if there is such other pending action or claim, a complete statement

Section 7.Effect of filing of a suit before the Bureau or with the proper court.

of the present status thereof; and (c) if he should thereafter learn that the

The filing of a suit to enforce the registered mark with the proper court or

same or similar action or claim has been filed or is pending, he shall report that

Bureau shall exclude any other court or agency from assuming jurisdiction over a

fact within five (5) days therefrom to the court wherein his aforesaid complaint

subsequently filed petition to cancel the same mark. On the other hand, the

or initiatory pleading has been filed.

earlier filing of petition to cancel the mark with the Bureau shall not constitute a
prejudicial question that must be resolved before an action to enforce the rights

Failure to comply with the foregoing requirements shall not be curable by mere

to same registered mark may be decided. (Emphasis supplied)

amendment of the complaint or other initiatory pleading but shall be cause for
the dismissal of the case without prejudice, unless otherwise provided, upon

It bears stressing that an action for infringement or unfair competition,

motion and after hearing. The submission of a false certification or non-

including the available remedies of injunction and damages, in the regular courts

compliance with any of the undertakings therein shall constitute indirect

can proceed independently or simultaneously with an action for the

contempt of court, without prejudice to the corresponding administrative and

administrative cancellation of a registered trademark in the BPTTT. As applied

criminal actions. If the acts of the party or his counsel clearly constitute willful

to the present case, petitioners prior filing of two inter partes cases against the

and deliberate forum shopping, the same shall be ground for summary dismissal

respondent before the BPTTT for the cancellation of the latters trademark

with prejudice and shall constitute direct contempt, as well as a cause for

registrations, namely, "LIVES" and "LIVES Label Mark," does not preclude

administrative sanctions.

petitioners right (as a defendant) to include in its answer (to respondents

complaint for damages in Civil Case No. No. 96-76944) a counterclaim for

In Digital Microwave Corp. v. CA,34 this Court gave the rationale for this rule,

infringement with a prayer for the issuance of a writ of preliminary injunction.

namely, that the certification against forum shopping is required to be

accomplished by petitioner himself because only the petitioner himself has

Second. As to the procedural matter, petitioner argues that the Court of

actual knowledge of whether or not he has initiated similar actions or

Appeals erred in giving due course to the respondents petition

proceedings in different courts or agencies. Even his counsel may be unaware of

such fact as he may only be aware of the action for which he has been retained.

After witness Atty. Gilbert Raymond T. Reyes [witness for the petitioner] had

As to corporations, the law requires that the certification could be made by its

finished his testimony, the counsel for defendant [herein petitioner] moved for

duly authorized director or officer. The Court also stresses that the petitioners

and was allowed ten (10) days from today within which to file a written formal

non-compliance and utter disregard of the rules cannot be rationalized by

offer of exhibits, copy furnish[ed] the counsel for plaintiff [herein respondent]

invoking the policy of liberal construction.

who is allowed a similar period of time from receipt thereof within which to file
comment and/or objection.

The requirement of certification against forum shopping under the Rules is to be

executed by the petitioner, or in the case of a corporation, its duly authorized

In the meantime, let the hearing be continued on December 4 & 11, 1996, both at

director or officer, but not petitioners counsel whose professional services have

9:00 a.m. as previously scheduled.

been engaged to handle the subject case. The reason is that it is the petitioner
who has personal knowledge whether there are cases of similar nature pending

The counsels are notified of this order in open court.

with the other courts, tribunals, or agencies. Thus, in the present case, the
Court of Appeals should have outrightly dismissed the petition

SO ORDERED.36

for certiorari filed by the respondent (as therein petitioner in the appeals court)
due to the defective certification of non-forum shopping. The certification made

However, on December 4, 1996, Atty. Yatco failed to appear without proferring

by Atty. Soriano, counsel for the respondent, who is not one of its duly

any valid reason which prompted the trial court to issue an order that

authorized directors or officers, is defective.Even if Atty. Soriano was the "in-

respondent was deemed to have waived its right to present evidence:

house counsel," the fact remains that no board resolution, or even a Secretarys
Certificate containing the board resolution, was submitted to show that he was

On call for hearing, only the counsel for defendant [herein petitioner] appeared.

indeed authorized to file the said petition in the Court of Appeals.

There was no appearance for plaintiff [herein respondent] although its counsel
was duly notified. In view thereof, upon motion of counsel for defendant,

Third. Petitioner avers that the Court of Appeals erred in finding that the

plaintiff is considered to have waived its right to present evidence to controvert

respondent was denied due process. It contends that the trial court had

defendants application for a writ of preliminary injunction, which, consequently,

correctly ruled that respondent was deemed to have waived its right to present

is hereby deemed submitted for resolution.

evidence due to its non-appearance at the scheduled hearing (to oppose the
petitioners application for the issuance of a writ of preliminary injunction) on

The counsel for defendant is notified in open court. Furnish the counsel for

December 4, 1996.

plaintiff with a copy hereof.

The records show that respondent, through its former counsel, Atty. Alfonso R.

SO ORDERED.37

Yatco, was present during the hearing on November 6, 1996 as reflected in the
minutes of the court proceedings that day. The counsels for both parties had
been duly notified in open court. The Branch Clerk of Court of RTC of Manila,
Branch 1, Atty. Joselito C. Frial, even made a notation in the minutes that
respondent (as oppositor) shall be given a period of 10 days to interpose its
opposition to the petitioners prayer for injunctive relief.
November 6, 1996 states:

35

The Order dated

Respondent explained to the trial court that its former counsel, Atty. Yatco, had
honestly thought that the December 4, 1996 hearing had been rescheduled to
December 11, 1996 per agreement with the petitioners counsel. This is not a
sufficient ground. It was correct for the trial court, upon motion of petitioner,
to consider the matter submitted for resolution on the basis of petitioners
evidence. Respondent cannot find solace in its lame excuse of honest mistake
which was, in fact, negligence and lack of vigilance.

Fourth. Petitioner claims that the assailed orders of the trial court, dated

so much so that there is nothing left for the trial court to try except merely

December 10, 1996 and April 11, 1997, did not prejudge the case. On the other

incidental matters.39 Such fact does not obtain in the present case.

hand, respondent counters that the trial courts order dated December 10, 1996
amounted to a prejudgment of the case, to wit: that its LIVEs backpocket

WHEREFORE, the petition is GRANTED and the Decision of the Court of

design was not copyrightable because it was neither an original work nor a novel

Appeals dated August 13, 1997 and its Resolution dated March 5, 1998 are

design; that it was a copy or slavish imitation of petitioners LEVIs Arcuate

REVERSED and SET ASIDE. The Regional Trial Court of Manila, Branch 1 is

trademark; and that no rights attendant to a copyright can ever attach to

ORDERED to proceed with the hearing of Civil Case No. 96-76944 with dispatch.

respondents backpocket design.

No costs.
The trial court granted petitioners prayer for the issuance of a writ of
preliminary injunction in its answer with counterclaim (to respondents complaint

SO ORDERED.

for damages). The writ did not have the effect of prejudging or disposing of the
merits of the case, but merely enjoined the respondents acts of manufacturing,
distributing, selling, or offering for sale the jeans which had allegedly
incorporated exact or colorable imitations of the products belonging to
petitioner. The Order dated April 11, 1997 of the trial court denying the
respondents motion for reconsideration categorically stated that the said Order
did not amount to a prejudgment of the case. Petitioner has yet to establish
during the trial that it is entitled to a permanent injunction by reason of
respondents confusingly similar LIVES products. Otherwise, the trial court
could declare that the LIVES trademark belonging to respondent was not
confusingly similar with the LEVIs trademark of petitioner.
Indeed, a writ of preliminary injunction is generally based solely on initial and
incomplete evidence adduced by the applicant (herein petitioner). The evidence
submitted during the hearing of the incident is not conclusive, for only a
"sampling" is needed to give the trial court an idea of the justification for its
issuance pending the decision of the case on the merits. As such, the findings of
fact and opinion of a court when issuing the writ of preliminary injunction are
interlocutory in nature. Moreover, the sole object of a preliminary injunction is
to preserve the status quo until the merits of the case can be heard. Since
Section 4 of Rule 58 of the Rules of Civil Procedure gives the trial courts
sufficient discretion to evaluate the conflicting claims in an application for a
provisional writ which often involves a factual determination, the appellate
courts generally will not interfere in the absence of manifest abuse of such
discretion.38 A writ of preliminary injunction would become a prejudgment of a
case only when it grants the main prayer in the complaint or responsive pleading,

P, per an agreement with Levi Strauss & Co., the principal based in US, was
granted a non-exclusive license to use LEVIS trademark, design, and name in the
manufacturing, marketing, distribution, and sale of its clothing and other goods,
to wit: LEVIS; 501; Two Horse Design; Two Horse Label; Two Horse
Patch; Two Horse Label with Patterned Arcuate Design; Arcuate Design; and
the composite trademarks, namely, Arcuate, Tab, and Two Horse Patch.
P discovered the existence of some trademark registrations belonging to R
which, in its view, were confusingly similar to its trademarks. P instituted two
Inter Partes cases for the cancellation of Rs trademark registrations (for
LIVES) and (for LIVES Label Mark).
P then applied for the issuance of a SW on the premises of R which was then
issued based on its finding of probable cause that the R had violated Article 189
of the RPC. The SWs were enforced and several goods belonging to R were
seized. Meanwhile, it appears that criminal charges were filed against R but the
same were eventually dismissed and the SWs were quashed.
Consequently, R filed a complaint for damages against P alleging that it had been
a lawful assignee and authorized user of the trademark LIVES and LIVES
LABEL MARK and copyright registrations of LIVES ORIGINAL JEANS, its
pocket design, and hand tag; and that their trademarks did not have any
deceptive resemblance with that of P. P countered that Rs LIVES brand
infringed upon its licensed brand name LEVIS.
The case was re-raffled among the Special Courts for cases involving violations
of Intellectual Property Rights.
R failing to appear, the TC declared R to have waived its right to present

evidence to controvert Ps application for a WPI. The TC found that the R

intended to appropriate, copy, and slavishly imitate the genuine appearance of
authentic LEVIs jeans and pass off its LIVEs jeans as genuine LEVIs jeans. TC
issued a WPI and Rs MR was denied.
R appealed to the Court of Appeals which rendered a decision in its favor. Ps MR
was denied hence the present petition for review on certiorari.
Issue:
Whether or not an administrative action for cancellation of Trademark can
proceed independently from an action of TMI/UC.
Ruling:
The petition has merit.
The passage of Republic Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, expanded the rights accorded to an owner of a
registered trademark. Sections 151 (2), 156, and 161 thereof state:
Section 151.2. Notwithstanding the foregoing provisions, the court or the
administrative agency vested with jurisdiction to hear and adjudicate any action
to enforce the rights to a registered mark shall likewise exercise jurisdiction to
determine whether the registration of said mark may be cancelled in accordance
with this Act. The filing of a suit to enforce the registered mark with the
proper court or agency shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same mark. On the
other hand, the earlier filing of petition to cancel the mark with the Bureau of
Legal Affairs {formerly BPTTT] shall not constitute a prejudicial question
that must be resolved before an action to enforce the rights to same
registered mark may be decided. (Sec. 17, R.A. No. 166a)
Finally, Rule 8, Section 7 of the Regulations on Inter Partes Proceedings,
provides:
Section 7. Effect of filing of a suit before the Bureau or with the
proper court. The filing of a suit to enforce the registered mark with the
proper court or Bureau shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same mark. On the
other hand, the earlier filing of petition to cancel the mark with the Bureau shall
not constitute a prejudicial question that must be resolved before an action to
enforce the rights to same registered mark may be decided. (Emphasis supplied)

It bears stressing that an action for infringement or unfair competition,

including the available remedies of injunction and damages, in the regular courts
can proceed independently or simultaneously with an action for the
administrative cancellation of a registered trademark in the BPTTT. As applied
to the present case, petitioners prior filing of two inter partes cases against
the respondent before the BPTTT for the cancellation of the latters trademark
registrations, namely, LIVES and LIVES Label Mark, does not preclude
petitioners right (as a defendant) to include in its answer (to respondents
complaint for damages in Civil Case No. No. 96-76944) a counterclaim for
infringement with a prayer for the issuance of a writ of preliminary injunction.
WHEREFORE, the petition is GRANTED and the CA Decision and Resolution are
REVERSED and SET ASIDE. The RTC is ORDERED to proceed with the hearing
of case with dispatch.

G.R. No. L-11818

July 31, 1959

Its motion for reconsideration having been denied, La Estrella has taken the
present appeal and here urges the same contention that the Director of Patents

LA ESTRELLA DISTILLERY, INC., petitioner,

has committed error in making a pronouncement in his decision that the two

vs.

labels in question are not similar, contrary to the pleadings and evidence

THE DIRECTOR OF PATENTS, CHENG CHIONG, and FOO U. CHING and

presented by the parties.

CO., respondents.
This appeal is without merit. While appellant attacks the grounds upon which the

Carlos, Yumol and Crisologo for petitioners.

decision of the Director of Patents is based, it does not question the dispositive

Pacunayen and Aguilar for respondent Company.

part thereof because it is favorable to it. Appellant claims that the matter of

Assistant Solicitor General E. Torres and Solicitor H. C. Fule for respondent

dissimilarity of the two labels has never been put in issue. This is not true. The

Director of Patents.

whole theory upon which this case was presented, tried and decided in the
Patent Office was predicated mainly on this question.

BARRERA, J.:
The pleadings of the parties disclose their respective contentions. The petition
La Estrella Distillery, Inc. (hereinafter referred to as La Estrella) and Cheng

for cancellation alleges, among others:

Chiong & Foo U. Ching Company (Cheng Chiong for short) are both holders of
Supplemental Registration label trademarks.

(1) That La Estrella's label "is not and cannot be a trademark as defined by law"
because it is a "common label affixed to rice wine, Chinese wine and similar goods

Before the Patent Office, proceedings for the cancellation of La Estrella's label

and also to other kinds of goods."

by trademark registration No. SR-13 were instituted by Cheng Chiong under

Section 19-A of Republic Act No. 166. After answer by La Estrella and after

(2) That "it is also used by petitioner (Cheng Chiong) and other manufacturers of

trial on the merits, the Director of Patents found that the two label trademarks

same or similar products."

are distinctly differently in appearance and possess different identifying marks

which make each satisfy the statutory requirement for registration the

(3) That therefore petitioners (Cheng Chiong) deem themselves "prejudiced

requirement of being capable of distinguishing the particular goods upon which

and/or injured damage by said registration."

each is used. The Director accordingly held that no damage to Cheng Chiong
could possibly result from La Estrella's registration and use of its own label

The answer of La Estrella avers:

trademark and dismissed the petition for its cancellation.

(1) That its trademark "meets all the necessary elements of a valid trademark" in
Despite this favorable decision, La Estrella moved for its reconsideration praying

that it is "so disposed as to attract attention, impress the memory, and

for the elimination of "the findings made therein that the label trademarks of

advertises more effectually the origin of the article to which it is attached."

the petitioner and respondents are distinctly different" and "that in lieu thereof
a pronouncement be made to the effect that said label trademarks are similar."

(2) That it has been long and continuously used by it "for no other purpose than

The reason given for this motion for reconsideration is that the matter of

to further distinguish the products of said respondent (La Estrella) from those

similarly or dissimilarity has not been raised in issue and that in fact the parties

of its competitors."

have impliedly admitted that the labels are similar.

(3) "That the trademark in question is the original and exclusive creation of

respondent" (La Estrella).

Act 166, as amended; (2) the mark was and is not capable of
distinguishing the registrant's goods; (3) the registrants had never used

During the trial, Cheng Chiong, in support of their claim that La Estrella's label

the mark or had not actually used the mark for one year next preceding

trademark is "publici juris" and therefore incapable of distinguish La Estrella's

the filing of his application for registration; and (4) the registrants had

goods, presented over a dozen labels of different merchants including his own.

abandoned his mark after registration. But although the petitioner for

To counteract this, La Estrella exhibited its own label in color and other

cancellation may succeed in establishing one or all of the above four

evidence to prove that its trademark sufficiently identifies and differentiates

facts, his petition for cancellation will nevertheless be dismissed, under

its merchandise from those of its competitors.

the same Sec. 19-A unless he is able clearly to establish that he will
damaged by the continuance on the register of the mark he seeks to

The record disclose similar testimonies of witnesses and statements of counsel

cancel.

of both parties sustaining respectively their opposing stands.

Of the two grounds alleged by the petitioner for cancellation (loser in
In disposing of and denying the motion for reconsideration of appellant La

this case, for canceling the respondent's mark, the one pertinent to the

Estrella, the Director of Patents correctly ruled:

instant motion of the respondent (winner in this case) for

reconsideration, is the following that respondent's label trademark was

It is alleged in said motion that the Director of Patents erred (1) in

and is common to the trade, being used not only by the respondent, but

finding that the label trade-mark of the petitioner and of the

by the petitioner and by the New Occidental Distillery as well. If this

respondent-registrant are not similar, and (2) in making pronouncement

allegation be true, then the respondent's trademark is not only

on why they are not similar.

incapable of distinguishing respondent's goods, but its continuance on

the register will damage the petitioner for cancellation.

Under Sec. 19-A Rep. Act 166, as amended, a label, used as a trademark,
may be registered on the Supplemental Register provided (1) it is not a

To determine whether respondent's label trademark was incapable of

mark prescribed or prohibited under paragraph (a), (b), (c) and (d) of

distinguishing respondent's goods and whether its continuance on the

Sec. 4 of the same acts; (2) it is capable of distinguishing the goods

register would damage the petitioner for cancellation, it was necessary

upon it is used; (3) it had been used by the applicants for registration

for this tribunal to examine the label trademark of the respondent, the

for one year next preceding the filing of the application.

petitioner, and the New Occidental Distillery and to make a finding

thereon. The finding was that the label trademark were different; that

Under the same Sec. 19-A, a person may petition for the cancellation of

therefore, respondent's goods, the petitioner for cancellation would not

the registration on the Supplementary Register was not label, used as a

be damaged by the continuance on the registers of the respondent's

trademark, provided (1) the registrant was not entitled to register the

label trademark, and petitioner's petition for cancellation should be

mark at the time he filed his application for its registration; and (2)

dismissed.

provided the register of the registered mark.

xxx

xxx

xxx

Under the same Sec. 19-A, among the facts that they may be
established to show that the registrant was not entitled to the

It is urged by the respondent's that the similarity of the label

registration of the mark sought to be cancelled are (1) the mark was

trademark having been admitted the only issue to be decided were

prescribed under paragraph (a), (b), (c) and (d), of Sec. 4 of the Rep.

1. Whether or not the label trademark of the respondent constitutes a

G.R. No. L-53672 May 31, 1982

valid trademark as defined by law; and

BATA INDUSTRIES, LTD., petitioner,
2. Whether or nor not the registration of respondent's trademark in

vs.

the Supplemental Register had been obtained trough fraud and false

THE HONORABLE COURT OF APPEALS; TIBURCIO S. EVALLE, DIRECTOR

representation.

OF PATENTS, NEW OLYMPIAN RUBBER PRODUCTS CO.,

INC., respondents.

and, because these were the only issues, it was an error, for this
tribunal to disregard them and to pass on the questions of the similarity

RESOLUTION

of dissimilarity of the label trademark.

ABAD SANTOS, J.:
These two issues are not important. What if the respondent's label
trademark was not valid trademark, not registerable under Sec. 19-A of

On October 27, 1980, the petition in this case was denied for lack of merit.

Rep. Act No. 166? What if the registration of the respondent's label

Petitioner moved to reconsider and as required, private respondent submitted

trademark was obtained thru the misrepresentation that respondent

comments. A hearing on the motion for reconsideration was held on June 7, 1982.

had been using the same since 1905? Even if proved, these two facts

This is Our resolution on the motion for reconsideration.

were not sufficient to warrant the cancellation of the respondent's

label trademark. In order that these two facts produce cancellation, it

In Inter Partes Case No. 654 of the Philippine Patent Office, New Olympian

was necessary that they he coupled with a showing that the maintenance

Rubber Products Co., Inc. sought the registration of the mark BATA for casual

of the respondent's label trademark on the register would damage the

rubber shoes. It alleged that it has used the mark since July 1, 1970.

petitioner. The continuance of the respondent's label trademark and

petitioner's on the register would damage the petitioner for

Registration was opposed by Bata Industries, Ltd., a Canadian corporation, which

cancellation only if the respondent's mark were similar. Hence the

alleged that it owns and has not abandoned the trademark BATA.

necessity and the importance of this tribunal making a finding on the

similarity or dissimilarity between the two marks.

Stipulated by the parties were the following:

For the above reasons it is ruled that this tribunal committed no error

1. Bata Industries, Ltd. has no license to do business in the Philippines;

as alleged in the instant motion for reconsideration. The motion for

reconsideration is, therefore, denied.
We find no error either in the reasoning or in the conclusion reached by the
Director of Patents.
Wherefore, the present petition for review is hereby dismissed, with costs
against the petitioner. It is so ordered.

2. It is not presently selling footwear under the trademark BATA in the

Philippines; and
3. It has no licensing agreement with any local entity or firm to sell its products
in the Philippines.
Evidence received by the Philippine Patent Office showed that Bata shoes made
by Gerbec and Hrdina of Czechoslovakia were sold in the Philippines prior to
World War II. Some shoes made by Bata of Canada were perhaps also sold in the

Philippines until 1948. However, the trademark BATA was never registered in the

separate opinion), the decision of August 9, 1979, was set aside and that of the

Philippines by any foreign entity. Under the circumstances, it was concluded that

Director of Patents was affirmed.

"opposer has, to all intents and purposes, technically abandoned its trademark
BATA in the Philippines."

In addition to points of law, Bata Industries, Ltd. questions "the circumstances

surrounding the issuance of the questioned resolutions of the respondent Court

Upon the other hand, the Philippine Patent Office found that New Olympian

of Appeals." In effect, it insinuates that there was something wrong when a new

Rubber Products Co., Inc.:

set of justices rendered a completely different decision.

... has overwhelmingly and convincingly established its right to the trademark

It should be stated that there is nothing wrong and unusual when a decision is

BATA and consequently, its use and registration in its favor. There is no

reconsidered. This is so when the reconsideration is made by a division composed

gainsaying the truth that the respondent has spent a considerable amount of

of the same justices who rendered the decision but much more so when the

money and effort in popularizing the trademark BATA for shoes in the

reconsideration is made by a different set of justices as happened in this case.

Philippines through the advertising media since it was lawfully used in commerce

Obviously, the new set of justices would have a fresh perspective unencumbered

on July 1, 1970. It can not be denied, therefore, that it is the respondent-

by the views expressed in the decision sought to be reconsidered. Nor should it

applicant's expense that created the enormous goodwill of the trademark BATA

be a cause for wonder why Justices Gutierrez, Agrava and Nocon had replaced

in the Philippines and not the opposer as claimed in its opposition to the

the original justices. Justice Cortez resigned to become a candidate for the

registration of the BATA mark by the respondent.

governorship of Cagayan (he was elected), while Justices Serrano and Jimenez
retired upon reaching the age of 65.

Additionally, on evidence of record, having also secured (three) copyright

registrations for the word BATA, respondent-applicant's right to claim

On the merits, the extended resolution penned by Justice Gutierrez does not

ownership of the trademark BATA in the Philippines, which it claims to be a

have to be fortified by Us. We agree with Mr. Justice Gutierrez when he says:

Tagalog word which literally means "a little child" (Exh. 5), is all the more
fortified.

We are satisfied from the evidence that any slight goodwill generated by the
Czechoslovakian product during the Commonwealth years was completely

The Philippine Patent Office dismissed the opposition and ordered the

abandoned and lost in the more than 35 years that have passed since the

registration of the trademark BATA in favor of the domestic corporation.

liberation of Manila from the Japanese troops.

Appeal from the decision of the Philippine Patent Office was made to the Court

The applicant-appellee has reproduced excerpts from the testimonies of the

of Appeals by Bata Industries, Ltd. In a decision penned by Justice Justiniano P.

opposer-appellant's witnesses to prove that the opposer-appellant was never a

Cortez dated August 9, 1979, with Justices Mariano Serrano and Jose B.

user of the trademark BATA either before or after the war, that the appellant

Jimenez concurring, the PPO decision was reversed. A motion for reconsideration

is not the successor-in-interest of Gerbec and Hrdina who were not is

filed by New Olympian Rubber Products Co., Inc. was denied on October 17,

representatives or agents, and could not have passed any rights to the appellant,

1979, by the same justices.

that there was no privity of interest between the Czechoslovakian owner and the
Canadian appellant and that the Czechoslovakian trademark has been abandoned

However, in a resolution on a second motion for reconsideration penned by

in Czechoslovakia.

Justice Hugo E. Gutierrez who is now a member of this Court, to which Justices
Corazon J. Agrava and Rodolfo A. Nocon concurred (with the former filing a

We agree with the applicant-appellee that more than substantial evidence

supports the findings and conclusions of the Director of Patents. The appellant

WHEREFORE, the motion for reconsideration is hereby denied for lack of merit.

has no Philippine goodwill that would be damaged by the registration of the mark

No special pronouncement as to costs.

in the appellee's favor. We agree with the decision of the Director of Patents
which sustains, on the basis of clear and convincing evidence, the right of the
appellee to the registration and protection of its industrial property, the BATA
trademark.

SO ORDERED.