Title: AMERICAN WIRE & CABLE COMPANY vs.

DIRECTOR OF PATENTS and

CENTRAL BANAHAW INDUSTRIES
Reference: G.R. No. L-26557 February 18, 1970
FACTS
Appeal filed by the American Wire & Cable Company, owner of the registered
trademark DURAFLEX for electric wires, questioning the correctness of the decision of
the Director of Patents holding that the label DYNAFLEX and Device for electric wires,
sought to be registered by the Central Banahaw Industries, Inc., is not similar to herein
appellant's patented mark.
On June 2 1962, Central Banahaw Industries, Inc., applied with the Director of
Patents for registration of the trademark DYNAFLEX and Device to be used in
connection with electric wires, class 20, which mark applicant allegedly had been using
since March 29 1962. The American Wire and Cable Co., Inc., another domestic
corporation and authorized user since April 10, 1958 of the registered trade mark
DURAFLEX and Globe representation, for electric wires, apparatus, machines and
supplies, class 20, opposed the application on the ground that applicant's use of the
trade mark DYNAFLEX would cause confusion or result in mistake to purchasers
intending to buy DURAFLEX electric wires and goods, the mark being registered
allegedly having practically the same spelling, pronunciation and sound, and covering
the same good, as that of the opposer. Besides, opposer contended that there has been
no continuous use in commerce of the applicant's mark.
Director of Patents rendered decision holding the applicant's mark DYNAFLEX
not to be similar to the previously registered trademark DURAFLEX. Consequently, the
application of Central Banahaw Industries for registration of DYNAFLEX was given due
course and the opposition thereto by American Wire & Cable Company dismissed. The
latter interposed the present appeal.
ISSUE
Whether or not the mark DYNAFLEX and Device is registrable as label for
electric wires, class 20, considering that the trademark DURAFLEX and Globe
representation also for electric wires, machines and supplies under class 20, has been
registered more than 4 years earlier.?
RULING
No.

Republic Act 166, as amended, on registrability of trademarks, prescribes:

SEC. 4. The owner of a trademark, trade name or service-mark used to

distinguish his goods, business or services from the goods, business or services of
others shall have the right to register the same, unless it:

xxx xxx xxx

 (d) Consists of or comprises a mark or trade name which so resembles a mark or
trade-name registered in the Philippines by another and not abandoned, as to be likely,
when applied to or used in connection with the goods, business or services of the
applicant, to cause confusion or mistake or to deceive purchasers.

It is clear from the above-quoted provision that the determinative factor in a

contest involving registration of trade mark is not whether the challenged mark
would actually cause confusion or deception of the purchasers but whether the use of
such mark would likely cause confusion or mistake on the part of the buying public. In
short, to constitute an infringement of an existing trademark patent and warrant a denial
of an application for registration, the law does not require that the competing trademarks
must be so identical as to produce actual error or mistake; it would be sufficient, for
purposes of the law, that the similarity between the two labels is such that there is a
possibility or likelihood of the purchaser of the older brand mistaking the newer brand
for it.

In fact, even their similarity in sound is taken into consideration, where the marks
refer to merchandise of the same descriptive properties, for the reason that trade idem
sonans constitutes a violation of trade mark patents.

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX,

is apparent. Not only are the initial letters and the last half of the appellations identical,
but the difference exists only in two out of the eight literal elements of the designations.
Coupled with the fact that both marks cover insulated flexible wires under class 20; that
both products are contained in boxes of the same material, color, shape and size; that
the dominant elements of the front designs are a red circle and a diagonal zigzag
commonly related to a spark or flash of electricity; that the back of both boxes show
similar circles of broken lines with arrows at the center pointing outward, with the
identical legend "Cut Out Ring" "Draw From Inside Circle", no difficulty is experienced in
reaching the conclusion that there is a deceptive similarity that would lead the purchaser
to confuse one product with the other.
Title: SAPOLIN CO. v. CORNELIO BALMACEDA

Reference: 67 Phil. 705

FACTS

Upon petition of the plaintiff, after the demurrer which the defendant Muller &
Phipps (Manila), Ltd., had interposed to its complaint had been sustained and after it
had presented a supplementary complaint anti its answer to the cross-complaint
presented by the defendant Sapolin Co., Inc., against it and the Director of the Bureau
of Commerce and Industry, the said supplementary complaint was dismissed, thus
leaving afoot only the cross-complaint.

In the cross-complaint the cross-plaintiff asked and continues to ask in this

instance that the cross-defendant and appellee, its agents, attorneys, and
representatives be enjoined from selling or offering to sell its products bearing the trade-
mark Lusolin. It also asks that the cross-defendant file under oath a true statement of
the profits that it had obtained from the sale of its products bearing the said trade-mark;
that as soon as said statement is filed, judgment be rendered ordering it to pay to said
cross-plaintiff an amount equivalent to double its profits; that the Director of Commerce
and Industry, be directed to cancel the certificate of the trade-mark Lusolin, originally
issued to Co Lu So and thereafter transferred to the cross-defendant, and that the latter
be likewise ordered to pay the costs.

After hearing and receiving the evidence adduced by the parties, the RTC of
Manila rendered judgment dismissing the cross-complaint of the cross-plaintiff on the
ground that, not having registered in the Bureau of Commerce and Industry the patent
or trade-mark certificate which it alleged to have obtained from the Patent Office of the
United States, it is not entitled to the remedy sought under the provisions of section 4 of
Act No. 666, as amended by section 1 of Act No. 3332. From this judgment the cross-
plaintiff appealed and now argues that the lower court committed the five errors set out
in its brief as follows: (1) The court erred in not holding that the trade-mark Lusolin of
the cross-defendant Germann & Co., Ltd., constitutes an infringement of the cross-
plaintiffs trade-mark Sapolin; (2) the court erred in ruling that there is no merit in the
action brought by the cross-defendant as plaintiff in the initial action in view of the
provisions of the said section 4 of the cited law; (3) the court erred in not holding that
the cross-plaintiff has a right of action, based upon unfair competition, against the cross-
defendant; (4) the court erred in not holding that Act No. 3332 amendatory of the
aforesaid section is unconstitutional; and finally (5) the court erred likewise in not
rendering judgment for the cross-plaintiff.

ISSUE

Whether or not there is a great similarity between the two trade-marks and trade-
names?
 RULING

No.

In the case of Forbes, Munn & Co. vs. Ang San To, the violation of a trade-mark
is established by comparing it with the one allegedly violated and by showing that the
resemblance between the two resemblance which in the case at bar is admitted by the
cross-defendant itself (Exhibit 9) is of such a nature that one can be taken for the other;
and it has also been stated that it is the said resemblance and not identity that
constitutes a sufficient violation, or better still, the test for the detection of whether or not
there is such a violation. To hold that there is a violation of a trade-mark, it is not
necessary to prove either that an exact copy thereof was made or that the same words
appearing therein were used. It will be sufficient to prove that its essential
characteristics have been imitated or copied.

As to the syllabication and sound of the two trade-names "Sapolin" and "Lusolin"
being used for paints, it seems plain that whoever hears or sees them cannot but think
of paints of the same kind and make; In a case to determine whether the use of the
trade-name "Stephens' Blue Black Ink" violated the trade-name "Steelpens Blue Black
Ink", it was said and held that there was in fact a violation; and in other cases it was
held that trade-names idem sonans constitute a violation in matters of patents and
trade-marks and trade-names.
Title: OPERATORS, INCORPORATED vs. THE DIRECTOR OF PATENTS, ET AL.
Reference: G.R. No. L-17901 October 29, 1965
Petitioner, a domestic corporation, applied to the Philippine Patent Office for registration
of AMBISCO as a trademark for its locally manufactured candy products. It has been
using said trademark since May 1956 by virtue of two contracts with the American
Biscuit Company, also a domestic corporation.
The National Biscuit Company opposed the application, having previously registered
NABISCO as trademark for its own bakery goods, such as biscuits, crackers, cakes and
wafers. The oppositor, a corporation organized in the United States, has had the said
trademark registered in the Philippines since 1930, and renewed the registration in 1948
under the latest trademark law.
ISSUE
Whether or not the two trademarks aforesaid are so similar to each other as to cause
confusion, mistake or deception of purchasers?
RULING
Yes.
If the competing trademark contains the main or essential or dominant features of
another, and confusion and deception is likely to result, infringement takes place.
Duplication or imitation is not necessary; nor is it necessary that the infringing label
should suggest an effort to imitate. The ordinary customer does not Scrutinize the
details of the label; he forgets or overlooks these, but retains a general impression, or a
central figure, or a dominant characteristic.
The question of infringement is to be determined by the test of dominancy. The
dissimilarity in size, form and color of the label and the place where applied are not
conclusive. If the competing label contains the trademark of another, and confusion or
deception is likely to result, infringement takes place, regardless of the fact that the
accessories are dissimilar. Duplication or exact imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to imitate.
Considering the similarities in appearance and sound between the marks
AMBISCO and NABISCO, the nature and similarity of the products of the parties
together with the fact that opposer's NABISCO has been used in commerce in the
Philippines for more than fifty five (55) years before AMBISCO was adopted by
applicant, confusion of purchasers is likely.