GENERIC AND DESCRIPTIVE MARKS

1. SOCIETE DES PRODUITS vs. CA

Principle: 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. 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.”

Facts:
In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology
Transfers an application for the registration of its trademark “Flavor Master” – an instant coffee.
Nestle opposed the application as it alleged that “Flavor Master” is confusingly similar to Nestle
coffee products like Master Blend and Master Roast. Nestle alleged that in promoting their
products, the word Master has been used so frequently so much so that when one hears the word
Master it connotes to a Nestle product. They provided as examples the fact that they’ve been
using Robert Jaworski and Ric Puno Jr. as their commercial advertisers; and that in those
commercials Jaworski is a master of basketball and that Puno is a master of talk shows; that the
brand of coffee equitable or fit to them is Master Blend and Master Roast. CFC Corporation on
the other hand alleged that the word “Master” is a generic and a descriptive term, hence not
subject to trademark. The Director of Patents ruled in favor of Nestle but the Court of Appeals,
using the Holistic Test, reversed the said decision.

Issue:
WON the Court of Appeals is correct

Ruling:
No. The proper test that should have been used is the Dominancy Test. The application of the
totality or holistic test is improper since the ordinary purchaser would not be inclined to notice
the specific features, similarities or dissimilarities, considering that the product is an inexpensive
and common household item. The use of the word Master by Nestle in its products and
commercials has made Nestle acquire a connotation that if it’s 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 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
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.”

2. EAST PACIFIC MERCHANDISING CORP. vs. DIRECTOR OF PATENTS

Principle: The term "Verbena" is descriptive of a whole genus of garden plants with fragrant
flowers used in connection with cosmetic products. Regardless of other connotations of the
word, the use of the term cannot be denied to other traders using such extract or oils in their own
products.

Facts: Marcelo T. Pua filed with the Office of the Director of Commerce an application for the
registration under Act 666 of the composite trademark consisting of the word "Verbena" and
representation of a Spanish lady, with specific evident set of designs. Respondent Luis P. Pellicer
filed an opposition to the application on the following grounds: (a) that the picture of a lady is
common in trade and the name "Verbena" is the generic name of a flower and, therefore, neither
may be exclusively appropriated or registered by the applicant.

The Director of Patents favored the Pellicer, alleging that the term "Verbena" is "generically
descriptive or misdescriptive of the products, namely lotion, face powder, hair pomade and
brillantine, while the representation of a Spanish lady is not only deceptively misdescriptive of
the source or origin, but also common in trade," and, resulting to the denial of East Pacific’s
registration.
Issues:
WON term “Verbena” is registerable.
`
Ruling:
The term "Verbena" is descriptive of a whole genus of garden plants with fragrant flowers used
in connection with cosmetic products. Regardless of other connotations of the word, the use of
the term cannot be denied to other traders using such extract or oils in their own products. It
follows that the Director of Patents correctly held the term to be non-registerable in the sense that
petitioner company would be entitled to appropriate its use to the exclusion of others legitimately
entitled, such as oppositor Pellicer.

In a leading case, Caswell vs. Davis, 17 Am. Rep. 233, 241, 242, the court, on a similar issue,
said:
There is no principle more firmly settled in the law of trademarks, than that words or phrases
which have been in common use and which indicate the character, kind, quality and composition
of the thing, may not be appropriated by anyone to his exclusive use. In the exclusive use of
them the law will not protect. . . .

The claim that the petitioner is entitled to registration because the term "Verbena" has already
acquired a secondary significance is without merit. The provisions of law (Rep. Act No. 166, sec.
4) require that the trademark applied for must have "become distinctive of the applicant's goods",
and that a prima facie proof of this fact exists when the applicant has been in the "substantially
exclusive and continuous use thereof as a mark or tradename, for five years next preceding the
date of the filing of the application for its registration".

3. MASSO HERMANOS vs. DIRECTOR OF PATENTS

Principle:
Section 13 of Act No. 666 provides that — ". . . But no alleged trademark . . . shall be registered
which is merely the name, quality or description of the mechandise upon which it is to be used . .
.. In an application for registration, the Director of the Bureau of Commerce shall decide the
presumptive lawfulness of claim to the alleged trademark.

Fact:
Petitioner’s claim: Masso Hermanos, S.A., is the registered owner under Act No. 666 of the
trademark composed of the word "Cosmopolite" used on canned fish. On June 14, 1948, the
petitioner, Masso Hermanos, applied to the Director of Patents for a new certificate of
registration of said trademark under the provisions of section 41 (a) of Republic Act No. 166.
Respondent’s claim: The word "Cosmopolite", as a trademark for canned fish is descriptive of
said goods and, therefore, could not have been legally registered as a trademark under the
provisions of Act No. 666 and, consequently, is not entitled to registration under section 41 (a) of
Republic Act No. 166.The respondent Director of Patents contends that the original registration
of the trademark under Act No. 666 was "null and void ab initio "because the word
"cosmopolite" is descriptive and, therefore, the registration thereunder is not subsisting.

Issue:
WON the word Cosmopolite is descriptive and therefore cannot be registered as a trademark

Ruling:
NO. The word "Cosmopolite" does not give the name, quality or description of the canned fish
for which it is used. It does not even describe the place of origin, for it does not indicate the
country or place where the canned fish was manufactured. It is a very general term which does
not give the kind or quality of the goods. For example, a dealer in shoes cannot register a
trademark "Leather Shoes" because that would be descriptive and it would be right to use the
same words with reference to their merchandise.

The court is, therefore, of the opinion that the registration of the trademark "Cosmopolite" under
Act No. 666 was valid and is subsisting. In view of the foregoing, the ruling of the respondent
Director of Patents is set aside and he is ordered to issue to the petitioner a new certificate of
registration of the trademark in exchange for the old one No. 1881 surrendered to him on June
18, 1948.

4. PHIL. REFINING CO. vs. NG SAM

Principle:
Mere classification of the goods cannot serve as the decisive factor in the resolution of whether
or not the goods a related. Emphasis should be on the similarity of products involved and not on
arbitrary classification of general description of their properties or characteristics.

Facts:
The petitioner Philippine Refining Co. first used 'Camia' as trademark for its products in 1922. In
1949, it caused the registration of the said trademark for its lard, butter, cooking oil, detergents,
polishing materials and soap products. In 1960, Ng Sam filed an application for 'Camia' for its
ham product (Class 47), alleging its first use in 1959. The petitioner opposed the said application
but the Patent Office allowed the registration of Ng Sam.
Issue:
Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of the
trademark 'Camia' on said goods would result to confusion as to their origin?

Ruling:
NO. The businesses of the parties are non-competitive and the products are so unrelated that the
use of the same trademark will not give rise to confusion nor cause damage to the petitioner. The
right to a trademark is a limited one, hence, others may use the same mark on unrelated goods if
no confusion would arise.
A trademark is designed to identify the user, hence, it should be so distinctive and sufficiently
original so as to enable those who see it to recognize instantly its source or origin. A trademark
must be affirmative and definite, significant and distinctive and capable of indicating origin.
'Camia' as a trademark is far from being distinctive, it in itself does not identify the petitioner as
the manufacturer of producer of the goods upon which said mark is used. If a mark is so
commonplace, it is apparent that it can't identify a particular business and he who adopted it first
cannot be injured by any subsequent appropriation or imitation by others and the public will not
be deceived.
Mere classification of the goods cannot serve as the decisive factor in the resolution of whether
or not the goods a related. Emphasis should be on the similarity of products involved and not on
arbitrary classification of general description of their properties or characteristics.

5. ASIA BREWERY INC. vs. CA

Principle:
Nobody can acquire any exclusive right to market articles supplying the simple human needs in
containers or wrappers of the general form, size and character commonly and immediately used
in marketing such articles.

Facts:
In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly
infringing upon their trademark on their beer product popularly known as “San Miguel Pale
Pilsen”; that Asia Brewery’s “Beer na Beer” product, by infringing upon SMC’s trademark has
committed unfair competition as “Beer na Beer” creates confusion between the two products.
The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC.

Issue:
WON ABI infringes SMC’s trademark and as such constitutes unfair competition
Ruling:
No. Infringement is determined by a test of dominancy. 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. A closer look at the trademark of both companies will show that the
dominant features of each absolutely bear no similarity to each other. SMC’s dominant
trademark is the name of the product, “San Miguel Pale Pilsen” written in white Gothic letters
with elaborate serifs at the beginning and end of the letters “S” and “M” on an amber
background while ABI’s is the name “Beer Pale Pilsen” with the word Beer written in large
amber letters, larger than any of the letter found in SMC label.

The bottle designs are different. SMC’s bottles have slender tapered neck while that of “Beer na
Beer” are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia
Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle
from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape
and design.

In SMC bottles, the words “pale pilsen” are written diagonally while in “Beer na Beer”, the
words “pale pilsen” are written horizontally. Further, the words “pale pilsen” cannot be said to
be copied from SMC for “pale pilsen” are generic words which originated from Pilsen,
Czechoslovakia. “Pilsen” is a geographically descriptive word and is non-registrable.

SMC bottles have no slogans written on them while Asia Brewery’s bottles have a copyrighted
slogan written on them that is “Beer na Beer”.

In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products,
it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no intention on
the part of Asia Brewery to confuse the public and make it appear that “Beer na Beer” is a
product of SMC, a long-established and more popular brand.

The word “pale pilsen” on ABI’s trademark does not constitute trademark infringement for it is a
generic word descriptive of the color of a type of beer. No one may appropriate generic or
descriptive words for they belong to the public domain.

ABI is likewise not guilty of unfair competition for unfair competition is the employment of
deception or any other means contrary to good faith by which a person shall pass off the goods
manufactured by him for those of another who has already established goodwill for his similar
goods. The universal test for this is whether the public is likely to be deceived. Actual or
probable deception and confusion on the part of the customers by reason of defendant’s practices
must appear. However, this is unlikely to happen in the case at bar for consumers generally order
beer by brand. Also, the fact that ABI also uses amber-colored steinie bottles cannot constitute
unfair competition for ABI did not copy SMC’s bottle. SMC did not invent but merely borrowed
the steinie bottle from abroad. Likewise, amber is the most effective color in preventing
transmission of light thus providing maximum protection to beer. 320 ml is likewise the standard
prescribed under Metrication Circular No. 778. The fact that it is the first to use the steinie bottle
does not give SMC a vested right to use it to the exclusion of everyone else. Nobody can acquire
any exclusive right to market articles supplying the simple human needs in containers or
wrappers of the general form, size and character commonly and immediately used in marketing
such articles.

There is no confusing similarity between the competing beers therefore ABI neither infringed
SMC’s trademark nor did it commit unfair competition.

6. ONG AI GUI vs.CA

Principle:
The claim that a combination of words may be registered as a trade-name is no justification for
not applying the rules or principles hereinabove mentioned. The use of a generic term in a trade-
name is always conditional, i. e., subject to the limitation that the registrant does not acquire the
exclusive right to the descriptive or generic term or word.

Facts:
Ong Ai Gui applied for the registration of the trade name ‘20th Century Nylon Shirts Factory’ to
be used in his general merchandising business dealing principally with textiles. Respondent E.I.
De Pont de Nemours and Company opposed on the ground that the word ‘nylon’ is a generic
term for a fabric material and it is descriptive and misdescriptive of petitioner’s goods. The
Director ruled that the application must be disapproved unless the word ‘nylon’ is disclaimed.

Issue:
WON the word ‘nylon’ being generic or descriptive can acquire a secondary meaning to be
registrable.

Ruling:
No.

Used in connection with shirt-making, “Nylon” can never become distinctive, can never acquire
secondary meaning, because it is a generic term, like cotton, silk, linen, or ramie. Just as no
length of use and no amount of advertising will make “cotton,” “silk,” “linen,” or “ramie,”
distinctive of shirts or of the business of making them, so no length of use and no amount of
advertising will make “nylon” distinctive of shirts or of the business of manufacturing them.”
It must also be noted that no claim is made in the application that the trade-name sought to be
registered has acquired what is known as a secondary meaning within the provisions of
paragraph (f) of section 4 of Republic Act No. 166. All that the applicant declares in his
statement accompanying his application is that the said trade-name has been continuously used
by it in business in the Philippines for about seven years, without allegation or proof that the
trade-name has become distinctive of the applicant’s business or services. Furthermore, the use
of the term “nylon” in the trade-name is both “descriptive” and “deceptively and misdescriptive”
of the applicant-appellant’s business, for apparently he does not use nylon in the manufacture of
the shirts, pants and wears that he produces and sells. How can a secondary meaning be acquired
if appellant’s products are not made of nylon? Certainly no exclusive right can be acquired by
deception of fraud.