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registered its business name with the DTI earlier than Ps registration of

its trademark, then respondent must be protected from infringement of its


Coffee Partners v. San Francisco Coffee & Roastery (G.R. No. 169504) trade name. Also that, Ps use of the trademark SAN FRANCISCO
COFFEE will likely cause confusion because of the exact similarity in
sound, spelling, pronunciation, and commercial impression of the words
Facts: SAN FRANCISCO which is the dominant portion of Rs trade name and
Ps trademark. On the issue of unfair competition, the BLA-IPO absolved P
from liability as it found no evidence of intent to defraud. Both parties
moved for partial reconsideration but were denied.
P is a local corporation engaged in the business of establishing and
maintaining coffee shops in the country. It has a franchise agreement with The parties appealed to the ODG-IPO which reversed the BLA-IPO decision,
Coffee Partners Ltd., a business entity organized and existing under the ruling that petitioners use of the trademark SAN FRANCISCO COFFEE did
laws of British Virgin Islands, for a non-exclusive right to operate coffee not infringe on Rs trade name.
shops in the Philippines using trademarks designed by CPL such as SAN
FRANCISCO COFFEE. On appeal, the CA set aside the decision of the ODG-IPO and reinstated the
decision of the BLA-IPO finding infringement. The CA denied both MRs.
R is a local corporation engaged in the wholesale and retail sale of coffee
and a registrant of the business name SAN FRANCISCO COFFEE & Issue:
ROASTERY, INC. with the DTI and had since built a customer base that
Whether or not Ps use of the trademark SAN FRANCISCO COFFEE
included Figaro Company, Tagaytay Highlands, Fat Willys, and other coffee
constitutes infringement of Rs trade name SAN FRANCISCO COFFEE &
companies. R formed a joint venture company with Boyd Coffee USA
ROASTERY, INC., even if the trade name is not registered with the IPO.
under the company name Boyd Coffee Company Philippines, Inc. BCCPI
engaged in the processing, roasting, and wholesale selling of coffee and later Ruling:
embarked on a project study of setting up coffee carts in malls and other
commercial establishments in Metro Manila. The petition has no merit.

R discovered that P was about to open a coffee shop under the name SAN Coming now to the main issue, in Prosource International, Inc. v. Horphag
FRANCISCO COFFEE, thus, sent a letter to P demanding that the latter stop Research Management SA, this Court laid down what constitutes
using the said name. R also filed a complaint with the BLA-IPO for TMI/UC. infringement of an unregistered trade name, thus:

BLA-IPO held that Ps trademark infringed on Rs trade name. It ruled that (1) The trademark being infringed is registered in the Intellectual Property
the right to the exclusive use of a trade name with freedom from Office; however, in infringement of trade name, the same need not be
infringement by similarity is determined from priority of adoption. Since R registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or of confusion is higher in cases where the business of one corporation is the
colorably imitated by the infringer; same or substantially the same as that of another corporation. In this case,
the consuming public will likely be confused as to the source of the coffee
(3) The infringing mark or trade name is used in connection with the sale, being sold at petitioners coffee shops.
offering for sale, or advertising of any goods, business or services; or the
infringing mark or trade name is applied to labels, signs, prints, Petitioners argument that San Francisco is just a proper name
packages, wrappers, receptacles, or advertisements intended to be used referring to the famous city in California and that coffee is simply a
upon or in connection with such goods, business, or services; generic term, is untenable. Respondent has acquired an exclusive right to
the use of the trade name SAN FRANCISCO COFFEE & ROASTERY, INC. since
(4) The use or application of the infringing mark or trade name is the registration of the business name with the DTI in 1995. Thus,
likely to cause confusion or mistake or to deceive purchasers or others respondents use of its trade name from then on must be free from any
as to the goods or services themselves or as to the source or origin of such infringement by similarity. Of course, this does not mean that respondent
goods or services or the identity of such business; and has exclusive use of the geographic word San Francisco or the generic
(5) It is without the consent of the trademark or trade name owner or the word coffee. Geographic or generic words are not, per se, subject to
assignee thereof. exclusive appropriation. It is only the combination of the words SAN
FRANCISCO COFFEE, which is respondents trade name in its coffee
Clearly, a trade name need not be registered with the IPO before an business, that is protected against infringement on matters related to the
infringement suit may be filed by its owner against the owner of an coffee business to avoid confusing or deceiving the public.
infringing trademark. All that is required is that the trade name is previously
used in trade or commerce in the Philippines.

Section 22 of Republic Act No. 166, as amended, required registration of a WHEREFORE, we DENY the petition for review. We AFFIRM the CA
trade name as a condition for the institution of an infringement suit, Decision and Resolution
however, RA 8293, which took effect on 1 January 1998, has dispensed with
the registration requirement. Section 165.2 of RA 8293 categorically states
that trade names shall be protected, even prior to or without registration
with the IPO, against any unlawful act including any subsequent use of the
trade name by a third party, whether as a trade name or a trademark likely
to mislead the public.

Applying either the dominancy test or the holistic test, petitioners SAN
FRANCISCO COFFEE trademark is a clear infringement of respondents SAN
FRANCISCO COFFEE & ROASTERY, INC. trade name. The descriptive words
SAN FRANCISCO COFFEE are precisely the dominant features of
respondents trade name. Petitioner and respondent are engaged in the
same business of selling coffee, whether wholesale or retail. The likelihood