Fredco v. Harvard University, G.R. No.

185917, June 1, 2011

Facts:
In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before theBureau of Legal Affairs of the
Philippine Intellectual Property Office against the
President and Fellows of Harvard College for the registration of its mark HarvardVeritas Shield Symbol
under the Classes 16, 18, 21, 25 and 28 of the NiceInternational Classification of Goods an Services alleging that its
predecessor-in-interest, New York Garments Manufacturing & Export Co., Inc., has been already using
the mark Harvard since 1985 when it registered the same mark under Clas
s 25 of theNice Classification. Thus, Harvard University is not a prior user of the mark in thePhilippines and, therefore,
has no right to register the mark.
On the other hand, Harvard University claimed that the mark Harvard has been
adopted by Harvard University in Cambridge, Massachusetts, USA since 1639.Furthermore, it alleges that the name and
mark
Harvard and Harvard Veritas ShieldSymbol is registered in more than 50 countries
, including the Philippines, and has beenused in commerce since 1872. In fact, the name and mark is rated as one of the
topbrands of the world, being worth between $750M and $1B.Decision of BLA-IPOThe Bureau of Legal Affairs, IPO ruled
in favour of Fredco ordering the cancellation of
Harvard Universitys mark under Class 25 only beca
use the other classes were notconfusingly similar with respect to the goods and services of Fredco.Decision of ODG-
IPOHarvard University appealed before the Office of the Director General of IPO whereinODG-IPO reversed the decision
of BLA-IPO. The Director General ruled that theapplicant must also be the owner of the mark sought to be registered
aside from the useof it. Thus, Fredco is not the owner of the mark because it failed to explain how its
predecessor got the mark Harvard. There was also no
evidence of the permission of Harvard University for Fredco to use the mark.Decision of the Court of AppealsFredco
appealed the decision of the Director General before the Court of Appeals,which then affirmed the decision of ODG-IPO
considering the facts found by theDirector General. CA ruled that Harvard University had been using the marks
waybefore Fredco and the petitioners failed to explain its use of the marks bearing the
words Harvard, USA, Established 1936 and Cambridge, Massachusetts within an
oblong device.
Issue:
W/N CA erred in affirming the decision of ODG-IPO
Held:
The Petition has no merit. Although R.A. 166 Section 2 states that before a mark can be registered, it must havebeen
actually used in commerce for not less than two months in the Philippines prior tofiling an application for its registration,
a trademark registered in a foreign country whichis a member of the Paris Convention is allowed to register without the
requirement of use in the commerce in the Philippines. Under Section 37 of R.A. 166, registrationbased on home
certificate is allowed and does not require the use of the mark in thePhilippines. Furthermore, R.A. 8293 Section 239.2
provides that marks which havebeen registered under R.A. 166 shall remain in force but shall be subject to theprovisions
of R.A. 8293, which does not require the prior use of the mark in thePhilippines.Why the petition must fail?1.
The inclusion of the origin Cambridge,
Massachusetts
in Fredcos mark
connotes that Fredco is associated with Harvard University, which is really not
true. The registration of Fredcos mark should have been rejected.
2. The Philippines is a signatory of the Paris Convention, which provides for theprotection against violation of intellectual
property rights to all the member countries regardless of whether the trademarks is registered or not in a
particular country.1980, Luis Villafuerte issued a memo to the Director of Patents ordering the latter toreject all pending
applications of marks which involves a well-known brand around theworld by applicants other than the owner of the
mark.1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the Director of Patents to implement
measures which will comply with the provisions of the ParisConvention. He provided criteria that should be considered
to any marks that are well-known in the Philippines or marks that belong to persons subject to the protection of
theConvention.Currently, well-known marks are protected under Section 123.1(e) of R.A. 8293. Additionally, Rule 102 of
the Rules and Regulations on Trademarks, Service Marks,Trade Names and Marked or Stamped Containers provides for
the criteria indetermining a well-known mark. The use of the mark in commerce is not anymore required because it is
enough that any combination of the criteria

be met in order for amark to be well-known.The ODG-IPO traced the

origin of the mark Harvard. It ruled that Harvard University
had been using the mark centuries before Fredco although the latter may have used themark first in the Philippines
before the former.Likewise, CA ruled that
the name and mark Harvard and
Harvard Veritas Shield
Symbol were first used in the United States since 1953 under Class 25.

Finally, the Supreme Court declared the mark Harvard to be well

-knowninternationally, including the Philippines.

Skechers, USA, Inc. v. Inter Pacific Industrial Trading Corp.

G.R. No. 164321 (2011)

Skechers, USA Inc. is the owner of the registered trademarks Skechers and S within an oval logo.

Skechers filed a criminal case for trademark infringement against several store-owners that were selling shoes branded
as Strong and bearing a similar S logo. The Regional Trial Court (RTC) issued search warrants, allowing the National
Bureau of Investigation (NBI) to raid the stores and confiscate 6,000 pairs of shoes.

The accused moved to quash the warrants, saying that there was no confusing similarity between the Skechers and the
Strong brands.

The RTC granted the motion to quash and ordered the NBI to return the seized goods. The court said that the two brands
had glaring differences and that an ordinary prudent consumer would not mistake one for the other.

On certiorari, the Court of Appeals (CA) affirmed the RTC ruling.

The matter was elevated to the Supreme Court (SC).

Issue: Did the accused commit trademark infringement?

Yes, the accused is guilty of trademark infringement.

Under the IP Code (RA No. 8293), trademark infringement is committed when:
Remedies; Infringement. Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same
container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any
goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake,
or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection
are committed regardless of whether there is actual sale of goods or services using the infringing material. (emphasis
supplied)
There is trademark infringement when the second mark used is likely to cause confusion. There are two tests to
determine this:
1. Dominancy Test the court focuses on the similarity of the dominant features of the marks that might cause
confusion in the mind of the consumer. Duplication or imitation is not necessary. Even accidental confusion may be cause
for trademark infringement. More consideration is given to the aural and visual impressions created by the marks on the
buyers and less weight is given to factors like price, quality, sales outlets and market segments.
Applied to this case: The SC found that the use of the S symbol by Strong rubber shoes infringes on the registered
Skechers trademark. It is the most dominant feature of the mark -- one that catches the buyers eye first. Even if the
accused claims that there was a difference because the S used by Skechers is found inside an oval, the fact that the
accused used the dominant S symbol already constitutes trademark infringement.
The SC disagreed with the CA reasoning that the S symbol is already used for many things, including the Superman
symbol. Even if this is true, the fact that Strong used same stylized S symbol as that of the Skechers brand makes this a
case of trademark infringement. The same font and style was used in this case. The Superman S symbol is clearly
different from the S in this case.
2. Holistic or Totality Test the court looks at the entirety of the marks as applied to the products, including the labels
and packaging. You must not only look at the dominant features but all other features appearing on both marks.
Applied to this case: Both RTC and CA used the Holistic Test to rule that there was no infringement. Both courts argued
the following differences:
The mark S found in Strong Shoes is not enclosed in an oval design.

The word Strong is conspicuously placed at the backside and insoles.

The hang tags and labels attached to the shoes bears the word Strong for respondent and Skechers
U.S.A. for private complainant;

Strong shoes are modestly priced compared to the costs of Skechers Shoes.

Also using the Holistic Test, the SC corrected the lower courts and ruled that the striking similarities between the
products outweigh the differences argued by the respondents:
Same color scheme of blue, white and gray;

Same wave-like pattern on the midsole and the outer sole;

Same elongated designs at the side of the midsole near the heel;

Same number of ridges on the outer soles (five at the back and six in front);

Same location of the stylized S symbol;

The words "Skechers Sport Trail" at the back of the Skechers shoes and "Strong Sport Trail" at the back of
the Strong shoes, using the same font, color, size, direction and orientation;

Same two grayish-white semi-transparent circles on top of the heel collars.

The features and overall design of the two products are so similar that there is a high likelihood of confusion.
Two products do not need to be identical, they just need to be similar enough to confuse the ordinary buyer in order to
constitute trademark infringement (Converse Rubber Corporation v. Jacinto Rubber & Plastic Co., 186 Phil. 85 [1980]).
Also, the difference in price cannot be a defense in a case for trademark infringement ( McDonalds Corporation v. L.C. Big
Mak Burger, Inc., 480 Phil. 402, 434 [2004]).
There are two types of confusion:
1. Product Confusion where the ordinary prudent purchaser would be induced to purchase on product in the
belief that he was buying another.
2. Source or Origin Confusion although the goods are different, the use of the mark causes the consumer to
assume that both products originate from the same source.

Trademark law protects the owner not only from product confusion but also from source confusion. Protection is not
limited to the same or similar products but extends to all cases where:
The consumer is misled into thinking that the trademark owner extended his business into a new field;

The consumer is misled into thinking that the trademark owner is in any way connected to the infringers
activities; or

The infringement forestalls the normal potential expansion of the trademark owners business.

Trademark law does not only protect the owners reputation and goodwill, it also protects the consumers from fraud and
confusion.
In this case, it is clear that there was an attempt to copy the trademark owners mark and product design. In trademark
infringement cases, you do not need to copy another's mark or product exactly. Colorable imitation is enough.

DERMALINE, INC. vs MYRA PHARMACEUTICALS, INC (G.R. 190065 8/16/2010)

Facts: Dermaline filed with the IPO an application to register the trademark Dermaline. Myra opposed this alleging that
the trademark resembles its trademark Dermalin and will cause confusion, mistake and deception to the purchasing
public. Dermalin was registered way back 1986 and was commercially used since 1977. Myra claims that despite
attempts of Dermaline to differentiate its mark, the dominant feature is the term Dermaline to which the first 8 letters
were identical to that of Dermalin. The pronunciation for both is also identical. Further, both have 3 syllables each with
identical sound and appearance.

Issue: W/N the IPO should allow the registration of the trademark Dermaline. NO

Held: As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to prevent third parties from using a
trademark, or similar signs or containers for goods or services, without its consent, identical or similar to its registered
trademark, where such use would result in a likelihood of confusion. In determining confusion, case law has developed
two (2) tests, the Dominancy Test and the Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause
confusion or deception. Duplication or imitation is not even required; neither is it necessary that the label of the applied
mark for registration should suggest an effort to imitate. Relative to the question on confusion of marks and trade
names, jurisprudence noted two (2) types of confusion, viz: (1) confusion of goods (product confusion), where the
ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other;
and (2) confusion of business (source or origin confusion), where, although the goods of the parties are different, the
product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate
with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief
that there is some connection between the two parties, though inexistent.

Using this test, the IPO declared that both confusion of goods and service and confusion of business or of origin were
apparent in both trademarks. While it is true that the two marks are presented differently, they are almost spelled in the
same way, except for Dermalines mark which ends with the letter "E," and they are pronounced practically in the same
manner in three (3) syllables, with the ending letter "E" in Dermalines mark pronounced silently. Thus, when an ordinary
purchaser, for example, hears an advertisement of Dermalines applied trademark over the radio, chances are he will
associate it with Myras. When one applies for the registration of a trademark or label which is almost the same or that
very closely resembles one already used and registered by another, the application should be rejected and dismissed
outright, even without any opposition on the part of the owner and user of a previously registered label or trademark.

Further, Dermalines stance that its product belongs to a separate and different classification from Myras products with
the registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate
the former with the latter, especially considering that both classifications pertain to treatments for the skin.