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ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY,INC., ET AL.

FACTS:

On August 31, 1955, Selecta Biscuit Company, Inc., filed with the Philippine Patent
Office a petition for the registration of the word "SELECTA" as trade-mark to be use in its bakery
products alleging that it is in actual use thereof for not less than two months before said date
and that "no other persons, partnership, corporation or association ... has the right to use said
trade-mark in the Philippines, either in the identical form or in any such near resemblance
thereto, as might be calculated to deceive." Its petition was referred to an examiner for study
who found that the trade-mark sought to be registered resembles the word "SELECTA" used by
the Acre and Sons and Company in its milk and ice cream products so that its use by
respondent will cause confusion as to the origin of their respective goods. Consequently, he
recommended that the application be refused.

The Patent Office ordered the publication of the application for purposes of opposition.
The Arce Sons and Company then filed their opposition claiming that the mark Selecta has
already become identified with the name of Ramon Arce and its business. Moreover, that the
mark was used continuously since 1933 while the respondent herein only used it during 1955.

ISSUE:

Is the word Selecta registrable?

HELD:

A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a


particular producer or manufacturer may be distinguished from that of others, and its sole
function is to designate distinctively the origin of the products to which it is attached."

The word 'SELECTA', it is true, may be an ordinary or common word in the sense that
may be used or employed by any one in promoting his business or enterprise, but once adopted
or coined in connection with one's business as an emblem, signor device to characterize its
products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business. In this sense, its used by another may lead to
confusion in trade and cause damage to its business. And this is the situation of petitioner when
it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and
guarantees its used to the exclusion of all others a (G. & C. Merriam Co. v. Saalfield, 198 F. 369,
373). And it is also in the sense that the law postulates that "The ownership or possession of a
trade-mark, . . . shall be recognized and protected in the same manner and to the same extent,
as are other property rights known to the law," thereby giving to any person entitled to the
exclusive use of such trade-mark the right to recover damages in a civil action from any person
who may have sold goods of similar kind bearing such trademark.
SOCIETE DES PRODUITS NESTLE V. CA (G.R. NO. 112012)

Facts:
Respondent CFC Corporation filed an application for the registration of the trademark FLAVOR
MASTER for instant coffee. Petitioners, a Swiss company and a domestic corporation licensee
of Societe, opposed on the ground that it is confusingly similar to its trademark for coffee and
coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners contend that the dominant
word MASTER is present in the 3 trademarks. Respondent CFC argued that the word MASTER
cannot be exclusively appropriated being a descriptive or generic term. BPTTT denied CFCs
application. CA held otherwise.

Issue: Whether or not the word MASTER is descriptive or generic term incapable of exclusive
appropriation.

Ruling: NO.
The word MASTER is neither a generic nor a descriptive term. As such, said term cannot 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. The term
MASTER, therefore, has acquired a certain connotation to mean the coffee products MASTER
ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term
MASTER in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion
or mistake or even to deceive the ordinary purchasers.

AMIGO MANUFACTURING, Inc., petitioner, vs. CLUETT PEABODY CO., INC., respondent.
PANGANIBAN, J.:

Facts: Respondent Cluett Peabody Co., Inc. (a New York corporation) filed a petition
against Petitioner Amigo Manufacturing Inc. (a Philippine corporation) for cancellation of
trademark.
Respondent claim exclusive ownership of the following trademark and devices, as used
on men's socks: a) GOLD TOE; b) DEVICE, representation of a sock and magnifying glass on
the toe of a sock; c) DEVICE, consisting of a plurality of gold colored lines arranged in parallel
relation within a triangular area of toe of the stocking and spread from each other by lines of
contrasting color of the major part of the stocking; and d) LINENIZED.

On the other hand, [petitioner's] trademark and device 'GOLD TOP, Linenized for Extra
Wear' has the dominant color 'white' at the center and a 'blackish brown' background with a
magnified design of the sock's garter, and is labeled 'Amigo Manufacturing Inc., Mandaluyong,
Metro Manila, Made in the Philippines'.

The Bureau of Patents decided adversely against Amigo Manufacturing, Inc. The
decision pivots on two point: the application of the rule of idem sonans and the existence of a
confusing similarity in appearance between two trademarks.

It found that the two trademarks are confusingly and deceptively similar to each other
are binding upon the courts, absent any sufficient evidence to the contrary. The Bureau
considered the totality of the similarities between the two sets of marks and found that they were
of such degree, number and quality as to give the overall impression that the two products are
confusingly if not deceptively the same.

The CA found that there is hardly any variance in the appearance of the marks 'GOLD
TOP' and 'GOLD TOE' since both show a representation of a man's foot wearing a sock, and
the marks are printed in identical lettering. [Petitioner]'s mark is a combination of the different
registered marks owned by [respondent].

Issues:
(1) Was petitioner's trademark used in commerce in the Philippines earlier than
respondent's actual use of its trademarks?
(2) Is petitioner's trademark confusingly similar to respondent's trademarks?
(3) Is the Paris Convention applicable?

Held:

1st Issue: Dates of First Use of Trademark and Devices


(1)No. Respondent had actually used the trademark and the devices in question prior to
petitioner's use of its own. During the hearing at the Bureau of Patents, respondent presented
Bureau registrations indicating the dates of first use in the Philippines of the trademark and the
devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the Representation of a
Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe Representation; and d)
February 28, 1952, "Linenized."

The registration of the above marks in favor of respondent constitutes prima facie
evidence, which petitioner failed to overturn satisfactorily, of respondent's ownership of those
marks, the dates of appropriation and the validity of other pertinent facts stated therein.

Moreover, the validity of the Certificates of Registration was not questioned. Neither did
petitioner present any evidence to indicate that they were fraudulently issued. Consequently, the
claimed dates of respondent's first use of the marks are presumed valid. Clearly, they were
ahead of petitioner's claimed date of first use of "Gold Top and Device" in 1958.
Furthermore, petitioner registered its trademark only with the supplemental register.
In La Chemise Lacoste v. Fernandez, the Court held that registration with the supplemental
register gives no presumption of ownership of the trademark.

2nd Issue: Similarity of Trademarks


(2) Yes. Petitioner points out that the director of patents erred in its application of the
idem sonans rule, claiming that the two trademarks "Gold Toe" and "Gold Top" do not sound
alike and are pronounced differently. It avers that since the words gold and toe are generic,
respondent has no right to their exclusive use.
The arguments of petitioner are incorrect. True, it would not be guilty of infringement on
the basis alone of the similarity in the sound of petitioner's "Gold Top" with that of respondent's
"Gold Toe." Admittedly, the pronunciations of the two do not, by themselves, create confusion.
The Bureau of Patents, however, did not rely on the idem sonans test alone in arriving at
its conclusion. This fact is shown in the following portion of its Decision:
"As shown by the drawings and labels on file, the mark registered by
Respondent is a combination of the abovementioned trademarks registered separately
by the petitioner in the Philippines and the United States.
"With respect to the issue of confusing similarity between the marks of the
petitioner and that of the respondent-registrant applying the tests of idem sonans, the
mark 'GOLD TOP & DEVICE' is confusingly similar with the mark 'GOLD TOE'. The
difference in sound occurs only in the final letter at the end of the marks. For the same
reason, hardly is there any variance in their appearance. 'GOLD TOE' and 'GOLD TOP'
are printed in identical lettering. Both show [a] representation of a man's foot wearing a
sock. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which by itself is a
registered mark."13

The Bureau considered the drawings and the labels, the appearance of the labels, the
lettering, and the representation of a man's foot wearing a sock. Obviously, its conclusion is
based on the totality of the similarities between the parties' trademarks and not on their sounds
alone.

In the present case, a resort to either the Dominancy Test or the Holistic Test shows that
colorable imitation exists between respondent's "Gold Toe" and petitioner's "Gold Top." A glance
at petitioner's mark shows that it definitely has a lot of similarities and in fact looks like a
combination of the trademark and devices that respondent has already registered; namely,
"Gold Toe," the representation of a sock with a magnifying glass, the "Gold Toe" representation
and "linenized."

An examination of the products in question shows that their dominant features are gold
checkered lines against a predominantly black background and a representation of a sock with
a magnifying glass. In addition, both products use the same type of lettering. Both also include a
representation of a man's foot wearing a sock and the word "linenized" with arrows printed on
the label. Lastly, the names of the brands are similar -- "Gold Top" and "Gold Toe." Moreover, it
must also be considered that petitioner and respondent are engaged in the same line of
business.

3rd Issue:The Paris Convention


(3)Yes. Petitioner claims that the CA erred in applying the Paris Convention. Although
respondent registered its trademark ahead, petitioner argues that the actual use of the said
mark is necessary in order to be entitled to the protection of the rights acquired through
registration.
As already discussed, respondent registered its trademarks under the principal register,
which means that the requirement of prior use had already been fulfilled. To emphasize, Section
5-A of Republic Act 166 requires the date of first use to be specified in the application for
registration. Since the trademark was successfully registered, there exists a prima facie
presumption of the correctness of the contents thereof, including the date of first use. Petitioner
has failed to rebut this presumption.

Thus, applicable is the Union Convention for the Protection of Industrial Property adopted in
Paris on March 20, 1883, otherwise known as the Paris Convention, of which the Philippines
and the United States are members. Respondent is domiciled in the United States and is the
registered owner of the "Gold Toe" trademark. Hence, it is entitled to the protection of the
Convention. A foreign-based trademark owner, whose country of domicile is a party to an
international convention relating to protection of trademarks,17 is accorded protection against
infringement or any unfair competition as provided in Section 37 of Republic Act 166, the
Trademark Law which was the law in force at the time this case was instituted.