CLASS 4 – TRADEMARKS
FACTS:
1. Fredco Manufacturing Corp. v. Pres. & Fellows of Harvard College, 650
SCRA 232 (2011)
Facts:
Petitioner Fredco Manufacturing filed a petition to cancel the registration of
respondent’s mark ‘Harvard Veritas Shield Symbol’ used in products such as bags and
t-shirts. Fredco alleges that the mark ‘Harvard’ was first used and registered by New
York Garments, a domestic corporation and its predecessor-in-interest, used in its
clothing articles. Respondent Harvard University on the other hand, alleges that it is
the lawful owner of the name and mark in numerous countries worldwide including
in the Philippines which was used in commerce as early as 1872. Respondent further
contend that it never authorized any person to use its name or mark in connection
with any goods in the Philippines. The IPO Bureau of Legal Affairs cancelled
respondent’s registration of the mark but only over the goods which are confusingly
similar with that of petitioner. IPO reversed the decision. CA affirmed.
Issue: Whether or not respondent’s trade name is infringed.
Ruling: YES.
Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On
this ground alone, Fredco’s registration of the mark “Harvard” should have been
disallowed. Indisputably, Fredco does not have any affiliation or connection with
Harvard University, or even with Cambridge, Massachusetts. Fredco or its
predecessor New York Garments was not established in 1936, or in the U.S.A. as
indicated by Fredco in its oblong logo.
Under Philippine law, a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected
“without the obligation of filing or registration.” “Harvard” is the trade name of the
world famous Harvard University, and it is also a trademark of Harvard University.
Under Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard
University is entitled to protection in the Philippines of its trade name “Harvard” even
without registration of such trade name in the Philippines. This means that no
educational entity in the Philippines can use the trade name “Harvard” without the
consent of Harvard University. Likewise, no entity in the Philippines can claim,
expressly or impliedly through the use of the name and mark “Harvard,” that its
products or services are authorized, approved, or licensed by, or sourced from,
Harvard University without the latter’s consent.
2. 246 Corporation v. Daway, 416 SCRA 315 (2003)
Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and
Crown Device, filed against petitioner 246 Corporation the instant suit for trademark
infringement and damages with prayer for the issuance of a restraining order or writ
of preliminary injunction.
Respondents alleged that sometime in July 1996, petitioner adopted and, since then,
has been using without authority the mark "Rolex" in its business name "Rolex Music
Lounge" as well as in its newspaper advertisements as – "Rolex Music Lounge, KTV,
Disco & Party Club."
Petitioner argued that respondents have no cause of action because no trademark
infringement exist; that no confusion would arise from the use by petitioner of the
mark "Rolex" considering that its entertainment business is totally unrelated to the
items catered by respondents such as watches, clocks, bracelets and parts thereof. It
also contended that the complaint was not properly verified and certified against
forum shopping considering that Atty. Alonzo Ancheta, the counsel of record of
respondents who signed the verification and certification, was not authorized to
represent respondents.
In 2000, 246 Corp. filed a motion for preliminary hearing on its affirmative defense;
which the court thereafter issued a subpoena ad testificandum to Atty. Atienza.
Montres Rolex opposed, and the trial court quashed the subpoena.
246 corp. filed a petition for certiorari before the Court of Appeals, which was
dismissed. Hence, the petition for review on certiorari.
ISSUES:
1. Whether or not the junior use of a registered mark on entirely different goods
subsists.
2. Whether or not the Court of Appeals committed grave abuse of discretion in
dismissing the petition.
HELD:
The rule, that there is no infringement in the use of a ‘junior user of the registered
mark on the entirely different goods, has been modified by Section 123.1 (f) of
Republic Act No. 8293 (Intellectual Property code). His use is precluded when that
the mark is well known internationally and in the Philippines, the use of the mark
would indicate a connection or relationship between the user and the registrant, and
that the interests of the well-known mark are likely to be damaged. The court
however cannot resolve the merits considering the facts as to the existence/absence
of the requisites should be addressed in a full- blown hearing and not on a mere
preliminary hearing.
Considering that the trial court correctly denied petitioner’s motion for preliminary
hearing on its affirmative defenses with motion to dismiss, there exists no reason to
compel Atty. Ancheta to testify. Hence, no abuse of discretion was committed by the
trial court in quashing the subpoena ad testificandum issued against Atty. Ancheta.
Grave abuse of discretion implies such capricious and whimsical exercise of judgment
as equivalent to lack of jurisdiction, or, in other words, where the power is exercised
in an arbitrary or despotic manner by reason of passion or personal hostility, and it
must be so patent and gross as to amount to an evasion of positive duty or to a virtual
refusal to perform the duty enjoined or to act at all in contemplation of law. None of
these was committed by the trial court; hence, the Court of Appeals correctly
dismissed the petition.
3. Ecole De Cuisine Manille v. Renaud Ceointreau G.R. No. 185830, July 5,
2013
Facts:
Respondent Cointreau, a partnership registered under the laws of France, applied for
the registration of the mark ‘Le Cordon Bleu & Device.’ Petitioner Ecole De Cuisine
opposed on the ground that it is the owner of the mark ‘Le Cordon Bleu, Ecole De
Cuisine Manille’ used in its culinary activities and restaurant business and that the
registration will create confusion to the public. Respondent Cointreau answered
claiming it is the true and lawful owner of the mark and had long been using it
worldwide. The IPO Bureau of Legal Affairs sustained petitioner’s opposition stating
that Cointreau had no prior use of the mark in the Philippines to be entitled to a
proprietary right over it. The IPO Director General reversed the decision and allowed
the mark’s registration holding that under RA No. 166, actual use in the Philippines is
not necessary to acquire ownership of the mark.
Issue:
Whether or not respondent’s prior use of the mark is a requirement for its
registration.
Ruling: YES.
Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the
owner thereof and must have actually used the mark in commerce in the Philippines
for 2 months prior to the application for registration. Section 2-A of the same law sets
out to define how one goes about acquiring ownership thereof. Under Section 2-A, it
is clear that actual use in commerce is also the test of ownership but the provision
went further by saying that the mark must not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not require that the actual
use of a trademark must be within the Philippines. Thus, as correctly mentioned by
the CA, under R.A. No. 166, one may be an owner of a mark due to its actual use but
may not yet have the right to register such ownership here due to the owner’s failure
to use the same in the Philippines for 2 months prior to registration. In the instant
case, it is undisputed that Cointreau has been using the subject mark in France, prior
to Ecole’s averred first use of the same in the Philippines, of which the latter was fully
aware thereof. On the other hand, Ecole has no certificate of registration over the
subject mark but only a pending application. Under the foregoing circumstances,
even if Ecole was the first to use the mark in the Philippines, it cannot be said to have
validly appropriated the same.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known
as the Intellectual Property Code of the Philippines, as amended, has already
dispensed with the requirement of prior actual use at the time of registration. Thus,
there is more reason to allow the registration of the subject mark under the name of
Cointreau as its true and lawful owner.
4. Mirpuri v. CA, G.R. No. 114508, 318 SCRA 516 (1999)
Facts:
Lolita Escobar applied for the registration of the trademark ‘Barbizon’ for her
products such as brassieres and ladies undergarments. Respondent Barbizon
Corporation, an American corporation, opposed alleging that petitioner’s mark is
confusingly similar to its own trademark ‘Barbizon.’ Escobar’s application was given
due course and her trademark was registered. Later, Escobar assigned all her rights
to petitioner Mirpuri who failed to file an Affidavit of Use resulting in the cancellation
of the trademark. Petitioner then applied for registration of the trademark to which
respondent Barbizon again opposed, now invoking the protection under Article 6bis
of the Paris Convention. The Director of Patents declaring respondent’s opposition
was already barred, petitioner’s application was given due course. CA reversed the
judgment.
Issue:
Whether or not respondent may invoke the protection under Article 6bis of the Paris
Convention.
Ruling: YES.
The Convention of Paris for the Protection of Industrial Property, otherwise known
as the Paris Convention, is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service
marks, trade names and indications of source or appellations of origin, and at the
same time aims to repress unfair competition. The Convention is essentially a
compact among various countries which, as members of the Union, have pledged to
accord to citizens of the other member countries trademark and other rights
comparable to those accorded their own citizens by their domestic laws for an
effective protection against unfair competition. Art. 6bis is a self-executing provision
and does not require legislative enactment to give it effect in the member country. It
may be applied directly by the tribunals and officials of each member country by the
mere publication or proclamation of the Convention, after its ratification according
to the public law of each state and the order for its execution.
The Philippines and the United States of America have acceded to the WTO
Agreement. Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at the dawn
of the new millennium.
5. Dermaline v. Myra, re, Dermalin
FACTS
Petitioner Dermaline filed before the Intellectual Property Office (IPO) an
application for registration of the trademark “DERMALINE DERMALINE,
INC.”Respondent Myra filed a Verified Opposition alleging that the trademark sought
to be registered by Dermaline so resembles its trademark “DERMALIN” and will likely
cause confusion, mistake and deception to the purchasing public. It further alleged
that Dermaline’s use and registration of its applied trademark will diminish the
distinctiveness and dilute the goodwill of Myra’s “DERMALIN,” which Myra has been
extensively commercially since October 31, 1977, and said mark is still valid and
subsisting.
Myra contends that despite Dermaline’s attempt to differentiate its applied
mark, the dominant feature is the term “DERMALINE,” which is practically identical
with its own “DERMALIN,” more particularly that the first eight (8) letters of the
marks are identical, and that notwithstanding the additional letter “E” by Dermaline,
the pronunciation for both marks are identical. Further, both marks have three (3)
syllables each, with each syllable identical in sound and appearance, even if the last
syllable of “DERMALINE” consisted of four (4) letters while “DERMALIN” consisted
only of three (3). Myra asserted that the mark “DERMALINE DERMALINE, INC.” is
aurally similar to its own mark such that the registration and use of Dermaline’s
applied mark will enable it to obtain benefit from Myra’s reputation, goodwill and
advertising and will lead the public into believing that Dermaline is, in any way,
connected to Myra. Myra added that even if the subject application was under
Classification 44 for various skin treatments, it could still be connected to the
“DERMALIN” mark under Classification for pharmaceutical products, since ultimately
these goods are very closely related. The IPO Bureau of Legal Affairs ruled in favor of
respondent; said decision was sustained by the IPO Director General and the Court
of Appeals.
ISSUE: Whether or not petitioner’s use of“Dermaline Dermaline Inc”can result in
confusion, mistake or deception on the part of the purchasing public
RULING: Yes.
A trademark is any distinctive word, name, symbol, emblem, sign, or
device, or any combination thereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish them from those manufactured,
sold, or dealt by others. As a registered trademark owner, Myra 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 likelihood of 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. It is applied when the trademark sought to be
registered contains the main, essential and dominant features of the earlier
registered trademark, and confusion or deception is likely to result. 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. The important issue is
whether the use of the marks involved would likely cause confusion or mistake in the
mind of or deceive the ordinary purchaser, or one who is accustomed to buy, and
therefore to some extent familiar with, the goods in question. Given greater
consideration are the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets, and market
segments. The test of dominancy is now explicitly incorporated into law in Section
155.1 of R.A. No. 8293 which provides—
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; (emphasis supplied)
On the other hand, the Holistic Test entails a consideration of the entirety of
the marks as applied to the products, including labels and packaging, in determining
confusing similarity. The scrutinizing eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels so that a
conclusion may be drawn as to whether one is confusingly similar to the other.
Relative to the question on confusion of marks and trade names,
jurisprudence has 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.
Both confusion of goods and service and confusion of business or of origin
were apparent in both trademarks. While there are no set rules that can be deduced
as what constitutes a dominant feature with respect to trademarks applied for
registration; usually, what are taken into account are signs, color, design, peculiar
shape or name, or some special, easily remembered earmarks of the brand that
readily attracts and catches the attention of the ordinary consumer.
While it is true that the two marks are presented differently – Dermaline’s
mark is written with the first “DERMALINE” in script going diagonally upwards from
left to right, with an upper case “D” followed by the rest of the letters in lower case,
and the portion “DERMALINE, INC.” is written in upper case letters, below and smaller
than the long-hand portion; while Myra’s mark “DERMALIN” is written in an upright
font, with a capital “D” and followed by lower case letters – the likelihood of
confusion is still apparent. This is because they are almost spelled in the same way,
except for Dermaline’s 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
Dermaline’s mark pronounced silently. Thus, when an ordinary purchaser, for
example, hears an advertisement of Dermaline’s applied trademark over the radio,
chances are he will associate it with Myra’s registered mark.
Dermaline’s stance that its product belongs to a separate and different
classification from Myra’s 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.
Indeed, the registered trademark owner may use its mark on the same or
similar products, in different segments of the market, and at different price levels
depending on variations of the products for specific segments of the market. The
Court is cognizant that the registered trademark owner enjoys protection in product
and market areas that are the normal potential expansion of his business.
Thus, the public may mistakenly think that Dermaline is connected to or
associated with Myra, such that, considering the current proliferation of health and
beauty products in the market, the purchasers would likely be misled that Myra has
already expanded its business through Dermaline from merely carrying
pharmaceutical topical applications for the skin to health and beauty services.
Verily, 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. This is intended not only to avoid confusion on the part of the public, but
also to protect an already used and registered trademark and an established
goodwill.
6. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG vs PHILIPPINE SHOE EXPO
MARKETING CORPORATION,
G.R. No. 194307. November 20, 2013
DOCTRINES:
 Under Section 2 of RA 166, which is also the law governing the subject
applications, in order to register a trademark, one must be the owner thereof
and must have actually used the mark in commerce in the Philippines for two
(2) months prior to the application for registration. Section 2-A of the same law
sets out to define how one goes about acquiring ownership thereof. Under the
same section, it is clear that actual use in commerce is also the test of ownership
but the provision went further by saying that the mark must not have been so
appropriated by another. Significantly, to be an owner, Section 2-A does not
require that the actual use of a trademark must be within the Philippines. Thus,
under RA 166, one may be an owner of a mark due to its actual use but may not
yet have the right to register such ownership here due to the owner’s failure to
use the same in the Philippines for two (2) months prior to registration.
 It must be emphasized that registration of a trademark, by itself, is not a mode of
acquiring ownership. If the applicant is not the owner of the trademark, he has no
right to apply for its registration. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant’s ownership of
the trademark, and of the exclusive right to the use thereof. Such presumption,
just like the presumptive regularity in the performance of official functions, is
rebuttable and must give way to evidence to the contrary.
 It is not the application or registration of a trademark that vests ownership
thereof, but it is the ownership of a trademark that confers the right to register
the same. A trademark is an industrial property over which its owner is entitled
to property rights which cannot be appropriated by unscrupulous entities that, in
one way or another, happen to register such trademark ahead of its true and
lawful owner. The presumption of ownership accorded to a registrant must then
necessarily yield to superior evidence of actual and real ownership of a trademark.
FACTS:
 Petitioner Birkenstock, a corporation duly organized and existing under the laws
of Germany applied for various trademark registrations before the Intellectual
Property Office (IPO). However, the applications were suspended in view of the
existing registration of the mark “BIRKENSTOCK AND DEVICE” under Registration
No. 56334 dated October 21, 1993 in the name of Shoe Town International and
Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe
Expo Marketing Corporation.
 On May 27, 1997, Birkinstock filed a petition (Cancellation Case) for cancellation
of Registration No. 564334 on the ground that it is the lawful and rightful owner
of the Birkenstock marks. During its pendency, however, respondent Philippine
Shoe Expo or it predecessor-in-interest failed to file the required 10th Year
Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on or before
October 21, 2004, thereby resulting the cancellation of such mark. Accordingly,
the cancellation case was dismissed for being moot and academic thereby paving
the way for the publication of the subject applications.
 In response, respondent Philippine Shoe Expo filed with the Bureau of Legal
Affairs (BLA) of the IPO three separate verified notices of opposition to the subject
applications docketed as Inter Partes Cases claiming, among others, it, together
with its predecessor-in-interest, has been using the Birkenstock marks in the
Philippines for more than 16 years through the mark “BIRKENSTOCK AND
DEVICE”.
 In its Decision, the BLA of the IPO sustained respondent’s opposition, thus
ordering the rejection of the subject applications of Petitioner. Aggrieved,
petitioner Birkinstock appealed to the IPO Director General whereby in its
decision, the latter reversed and set aside the ruling of the BLA thus allowing the
registration of the subject applications.
 Finding the IPO Director General’s reversal of the BLA unacceptable, respondent
Philippine Shoe Expo filed a petition for review with the Court of Appeals. In its
decision dated June 25, 2010, the CA reversed and set aside the ruling of the IPO
Director General and reinstated that of the BLA. The petitioner Birkenstock filed
a Motion for Reconsideration but was denied by the CA.
 Hence , this petition to the Supreme Court.
ISSUE:
1. Whether or not the subject marks should be allowed registration in the
name of the petitioner?
RULING:
The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166, it
provides that, “Each certificate of registration shall remain in force for twenty years:
Provided, that the registration under the provisions of this Act shall be cancelled by
the Director, unless within one year following the fifth, tenth and fifteenth
anniversaries of the date of issue of the certificate of registration, the registrant shall
file in the Patent Office an affidavit showing that the mark or trade-name is still in
use or showing that its non-use is due to special circumstance which excuse such non-
use and is not due to any intention to abandon the same, and pay the required fee.”
In the case at bar, respondent admitted that it failed to file the 10th Year DAU for
Registration No. 56334 within the requisite period, or on or before October 21, 2004.
As a consequence, it was deemed to have abandoned or withdrawn any right or
interest over the mark “BIRKENSTOCK”. It must be emphasized that registration of a
trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the
owner of the trademark, he has no right to apply for its registration. Registration
merely creates a prima facie presumption of the validity of the registration. Such
presumption, just like the presumptive regularity in the performance of official
functions, is rebuttable and must give way to evidence to the contrary. Besides,
petitioner has duly established its true and lawful ownership of the mark
“BIRKENSTOCK”. It submitted evidence relating to the origin and history of
“BIRKENSTOCK” and it use in commerce long before respondent was able to register
the same here in the Philippines. Petitioner also submitted various certificates of
registration of the mark “BIRKENSTOCK” in various countries and that it has used such
mark in different countries worldwide, including the Philippines.
6. Shang Properties v. St. Francis Development Corporation
GR No. 190706; July 21, 2014
FACTS:
Respondent domestic corporation is engaged in the real estate business and is the
developer of the St. Francis Square Commercial Center (built sometime in 1992).
It filed separate complaints against petitioners before the IPO - BLA, namely:
(a) IPV Case – an intellectual property violation case for unfair competition,
false or fraudulent declaration, and damages arising from petitioners’ use
and filing of applications for the registration of the marks “THE ST. FRANCIS
TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE,”; and
(b) St. Francis Towers IP Case – an inter partes case opposing the petitioners’
application for registration of the mark “THE ST. FRANCIS TOWERS” for use
relative to the latter’s business, particularly the construction of permanent
buildings or structures for residential and office purposes; and
 (c) St. Francis Shangri-La IP Case – an inter partes case opposing the
petitioners’ application for registration of the mark “THE ST. FRANCIS
SHANGRI-LA PLACE,”.
Respondent alleged that it has used the mark “ST. FRANCIS” to identify its numerous
property development projects located at Ortigas Center, such as the
aforementioned St. Francis Square Commercial Center, a shopping mall called the
“St. Francis Square,” and a mixed-use realty project plan that includes the St. Francis
Towers. Respondent added that as a result of its continuous use of the mark “ST.
FRANCIS” in its real estate business, it has gained substantial goodwill with the public
that consumers and traders closely identify the said mark with its property
development projects. Accordingly, respondent claimed that petitioners could not
have the mark “THE ST. FRANCIS TOWERS” registered in their names, and that
petitioners’ use of the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS
SHANGRI-LA PLACE” in their own real estate development projects constitutes unfair
competition as well as false or fraudulent declaration.
Petitioners denied committing unfair competition and false or fraudulent
declaration, maintaining that they could register the mark “THE ST. FRANCIS
TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE” under their names. They
contended that respondent is barred from claiming ownership and exclusive use of
the mark “ST. FRANCIS” because the same is geographically descriptive of the goods
or services for which it is intended to be used. This is because respondent’s as well as
petitioners’ real estate development projects are located along the streets bearing
the name “St. Francis,” particularly, St. Francis Avenue and St. Francis Street (now
known as Bank Drive), both within the vicinity of the Ortigas Center.
ISSUE:
Whether or not petitioners are guilty of unfair competition in using the marks “THE
ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE.”
RULING:
NO.
RATIO DECIDENDI:
The unfair competition concept refers to the “‘the passing off (or palming off) or
attempting to pass off upon the public of the goods or business of one person as the
goods or business of another with the end and probable effect of deceiving the
public.’ Passing off (or palming off) takes place where the defendant, by imitative
devices on the general appearance of the goods, misleads prospective purchasers
into buying his merchandise under the impression that they are buying that of his
competitors. [In other words], the defendant gives his goods the general appearance
of the goods of his competitor with the intention of deceiving the public that the
goods are those of his competitor.”
The “true test” of unfair competition has thus been “whether the acts of the
defendant have the intent of deceiving or are calculated to deceive the ordinary
buyer making his purchases under the ordinary conditions of the particular trade to
which the controversy relates.” Based on the foregoing, it is therefore essential to
prove the existence of fraud, or the intent to deceive, actual or probable, determined
through a judicious scrutiny of the factual circumstances attendant to a particular
case.
Here, the Court finds the element of fraud to be wanting; hence, there can be no
unfair competition. The CA’s contrary conclusion was faultily premised on its
impression that respondent had the right to the exclusive use of the mark “ST.
FRANCIS,” for which the latter had purportedly established considerable goodwill.
What the CA appears to have disregarded or been mistaken in its disquisition,
however, is the geographically descriptive nature of the mark “ST. FRANCIS” which
thus bars its exclusive appropriability, unless a secondary meaning is acquired.
As deftly explained in the U.S. case of Great Southern Bank v. First Southern Bank:
“[d]escriptive geographical terms are in the ‘public domain’ in the sense that every
seller should have the right to inform customers of the geographical origin of his
goods. A ‘geographically descriptive term’ is any noun or adjective that designates
geographical location and would tend to be regarded by buyers as descriptive of the
geographic location of origin of the goods or services. A geographically descriptive
term can indicate any geographic location on earth, such as continents, nations,
regions, states, cities, streets and addresses, areas of cities, rivers, and any other
location referred to by a recognized name. In order to determine whether or not the
geographic term in question is descriptively used, the following question is relevant:
(1) Is the mark the name of the place or region from which the goods actually come?
If the answer is yes, then the geographic term is probably used in a descriptive
sense, and secondary meaning is required for protection.”
Secondary meaning is established when a descriptive mark no longer causes the
public to associate the goods with a particular place, but to associate the goods with
a particular source. In other words, it is not enough that a geographically-descriptive
mark partakes of the name of a place known generally to the public to be denied
registration as it is also necessary to show that the public would make a goods/place
association
– that is, to believe that the goods for which the mark is sought to be registered
originate in that place. However, where there is no genuine issue that the
geographical significance of a term is its primary significance and where the
geographical place is neither obscure nor remote, a public association of the goods
with the place may ordinarily be presumed from the fact that the applicant’s own
goods come from the geographical place named in the mark.
 by CFC of the term “MASTER” in the trademark for its coffee product FLAVOR MASTER
7. Societe Des Produits Nestle vs. CA (G.R. No. 112012) is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

Facts: 8. Lyceum vs. CA

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 FACTS:
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. 1. Petitioner had sometime commenced before in the SEC a complaint against
Respondent CFC argued that the word MASTER cannot be exclusively appropriated
being a descriptive or generic term. BPTTT denied CFC’s application. CA held Lyceum of Baguio, to require it to change its corporate name and to adopt another
otherwise. name not similar or identical with that of petitioner. SEC decided in favor of

Issue: petitioner. Lyceum of Baguio filed petition for certiorari but was denied for
Whether or not the word MASTER is descriptive or generic term incapable of lack of merit.
exclusive appropriation.
2. Armed with the resolution of the Court, petitioner instituted before the SEC to
Ruling: NO.
compel private respondents, which are also educational institutions, to delete word
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. “Lyceum” from their corporate names and permanently to enjoin them from using
Generic terms are those which constitute “the common descriptive name of an article
such as part of their respective names.
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
3. Hearing officer sustained the claim of petitioner and held that the word “Lyceum”
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 was capable of appropriation and that petitioner had acquired an enforceable right
idiosyncratic characteristics of a particular product,” and are not legally protectable.
to the use of that word.
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,
4. In an appeal, the decision was reversed by the SEC En Banc. They held that the
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, word “Lyceum” to have become identified with petitioner as to render use thereof
qualities or characteristics of the goods,” or if it clearly denotes what goods or
of other institutions as productive of confusion about the identity of the schools
services are provided in such a way that the consumer does not have to exercise
powers of perception or imagination. concerned in the mind of the general public.

Rather, the term “MASTER” is a suggestive term brought about by the advertising 5. Petitioner went to appeal with the CA but the latter just affirmed the decision of
scheme of Nestle. Suggestive terms are those which, in the phraseology of one court,
the SEC En Banc.
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
HELD:
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,” Under the corporation code, no corporate name may be allowed by the SEC if the
“figurativeness,” or ” imaginative effort on the part of the observer.” The term proposed name is identical or deceptively or confusingly similar to that of any existing
“MASTER”, therefore, has acquired a certain connotation to mean the coffee
products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use corporation or to any other name already protected by law or is patently deceptive,
confusing or contrary to existing laws. The policy behind this provision is to avoid
fraud upon the public, which would have the occasion to deal with the entity
concerned, the evasion of legal obligations and duties, and the reduction of
difficulties of administration and supervision over corporations.
The corporate names of private respondents are not identical or deceptively or
confusingly similar to that of petitioner’s. Confusion and deception has been
precluded by the appending of geographic names to the word “Lyceum”.
Furthermore, the word “Lyceum” has become associated in time with schools and
other institutions providing public lectures, concerts, and public discussions. Thus, it
generally refers to a school or an institution of learning.
Petitioner claims that the word has acquired a secondary meaning in relation to
petitioner with the result that the word, although originally generic, has become
appropriable by petitioner to the exclusion of other institutions.
The doctrine of secondary meaning is a principle used in trademark law but has been
extended to corporate names since the right to use a corporate name to the exclusion
of others is based upon the same principle, which underlies the right to use a
particular trademark or tradename. Under this doctrine, a word or phrase originally
incapable of exclusive appropriation with reference to an article in the market,
because geographical or otherwise descriptive might nevertheless have been used
for so long and so exclusively by one producer with reference to this article that, in
that trade and to that group of purchasing public, the word or phrase has come to
mean that the article was his produce. The doctrine cannot be made to apply where
the evidence didn't prove that the business has continued for so long a time that it
has become of consequence and acquired good will of considerable value such that
its articles and produce have acquired a well known reputation, and confusion will
result by the use of the disputed name.
Petitioner didn't present evidence, which provided that the word “Lyceum” acquired
secondary meaning. The petitioner failed to adduce evidence that it had exclusive
use of the word. Even if petitioner used the word for a long period of time, it hadn’t
acquired any secondary meaning in its favor because the appellant failed to prove
that it had been using the same word all by itself to the exclusion of others.
9. La Chemise Lacoste v. Fernandez, 129 SCRA 373
Facts:
Petitioner La Chemise Lacoste is a foreign corporation and the actual owner of the
trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and ‘Crocodile Device’ used on clothing and
other goods that are sold in many parts of the world. Herein respondent Hemadas &
Co., a domestic firm, applied and was granted registration of the mark ‘Chemise
Lacoste and Crocodile Device’ for its garment products. Sometime later, petitioner
applied for the registration of its mark ‘Crocodile Device’ and ‘Lacoste’ but was
opposed by herein respondent. Later, petitioner filed a letter-complaint of unfair
competition before the NBI which led to the issuance of search warrants and the
seizure of goods of respondent Hemadas. Respondent moved to quash the warrants
alleging that its trademark was different from petitioner’s trademark. Respondent
court ruled to set aside the warrants and to return the seized goods.
Issue:
Whether or not petitioner’s trademark is a well-known mark protected under the
Paris Convention.
Ruling: YES.
In upholding the right of the petitioner to maintain the present suit before our courts
for unfair competition or infringement of trademarks of a foreign corporation, we are
moreover recognizing our duties and the rights of foreign states under the Paris
Convention for the Protection of Industrial Property to which the Philippines and
France are parties.
Pursuant to this obligation, the Ministry of Trade issued a memorandum addressed
to the Director of the Patents Office directing the latter to reject all pending
applications for Philippine registration of signature and other world famous
trademarks by applicants other than its original owners or users. The conflicting
claims over internationally known trademarks involve such name brands as Lacoste,
et. al. It is further directed that, in cases where warranted, Philippine registrants of
such trademarks should be asked to surrender their certificates of registration, if any,
to avoid suits for damages and other legal action by the trademarks’ foreign or local
owners or original users.
The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v.
Sadhwani decision which we cite with approval sustained the power of the Minister
of Trade to issue the implementing memorandum and declared La Chemise Lacoste
S.A. the owner of the disputed trademark, stating: “In the case at bar, the Minister of
Trade, as ‘the competent authority of the country of registration,’ has found that
among other well-known trademarks ‘Lacoste’ is the subject of conflicting claims. For
this reason, applications for its registration must be rejected or refused, pursuant to
the treaty obligation of the Philippines.”