Phil. Refining Co. v.
Ng Sam and Director of Patents The petitioner alleged that its trademark “Victorias” and
G.R. No. L-26676, July 30, 1982
Facts of the Case: 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?
HELD: 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.
Victorias Milling Company v. Ong Su
FACTS: The petitioner, Victorias Milling Company, Inc., a
domestic corporation and engaged in the manufacture and
sale of refined granulated sugar, is the owner of the
trademark “VICTORIAS” and diamond design registered in
the Philippines Patent Office on November 9, 1961.
The respondent ONG Su is engaged in the repacking and
sale of refined sugar and is the owner of the trademark
“VALENTINE” and design registered in the Philippines
Patent Office on June 20, 1961.
On October 4, 1963, Victorias Milling Company, Inc. filed
with the Philippines Patent Office a petition to cancel the
registration of the ONG Su trademark “Valentine.”
The evidence is that ONG Su has been using his trademark
diamond design has become distinctive of its sugar long
before the respondent used its trademark; that the
registration of “Valentine” and design has caused and will
cause great damage to petitioner by reason of mistake,
confusion, or deception among the purchasers because it is
similar to its “Victorias” trademark; that registration was
fraudulently obtained by respondent ONG Su; and that
“Valentine” falsely suggests a connection with Saint
Valentine or with an institution or belief connected therewith.
In his answer to the petition the respondent averred that he
is doing business under the name and style “Valentine
Packaging” and has registered the trademark “Valentine”
with a design for sugar and was issued Certificate of
Registration No. 8891 dated June 20, 1961; that the
trademark “Victorias” with diamond design and the
trademark “Valentine” with a design are two different marks;
and that there is absolutely no likelihood of confusion,
mistake or deception to purchasers through the concurrent
use of the petitioner’s mark “Victorias” with a diamond
design and the respondents’ mark “Valentine” with a design
in connection with sugar.
The Director of Patents denied the petition to cancel the
certificate of registration of the respondent ONG Su covering
the trademark “Valentine” and design. “Herein that the
petitioner failed to establish that diamond design
component of its mark has acquired a secondary
meaning and that the literal portion of the marks have
no similarity, there is no reasonable likelihood of
purchaser confusion resulting from registrant’s use of
VALENTINE within a diamond and petitioner’s use of
VICTORIAS within a diamond.”
ISSUE: WON RESPONDENT DIRECTOR OF PATENTS
ERRED IN HOLDING PETITIONER’S DIAMOND DESIGN
HAS NOT ACQUIRED A SECONDARY MEANING.
HELD: NO. The DOP is correct. Peitioner has not acquired
secondary meaning.
The contention of petitioner that the diamond design in its
trademark is an index of origin has no merit. The petitioner
has not shown that the design portion of the mark has been
so used that purchasers recognize the design, standing
alone, as indicating goods coming from the registrant. As
correctly stated by the Director of Patents, common
geometric shapes such as diamonds ordinarily are not
regarded as indicia of origin for goods to which the marks
are applied unless they have acquired a secondary meaning.
And there is no evidence that the diamond design in the
trademark of the petitioner has acquired a secondary
meaning with respect to its sugar business. The word
“Victorias” is what identifies the sugar contained in the bag
as the product of the petitioner. Indeed, the petitioner has
advertised its sugar in bags marked “Victorias” with oval,
hexagon and other designs.
since prior to the last World War and he obtained the
registration thereof on June 20, 1961. Vijandre declared that
the petitioner started to use its trademark only in 1947. Said
trademark was registered on November 9, 1961. It cannot be
said, therefore, that the respondent ONG Su imitated the
trademark of the petitioner.
It seems clear that the words “Valentine” and “Victorias” and
the names and places of business of Victorias Milling
Company, Inc. and ONG Su are the dominant features of the
trademarks in question. The petitioner has not established
such a substantial similarity between the two trademarks in
question as to warrant the cancellation of the trademark
‘Valentine’ of the respondent ONG Su.
Etepha v. Director of Patents (G.R. No. L-20635)
Facts:
Respondent Westmont Pharmaceuticals, an American
corporation, sought registration of trademark ‘Atussin’ placed
on its medicinal preparation for the treatment of coughs.
Petitioner Etepha, owner of the trademark ‘Pertussin’ placed
also on preparation for cough treatment, objected claiming
that it will be damaged since the 2 marks are confusingly
similar. The Director of Patents gave due course to the
application.
Issue:
Whether or not petitioner’s trademark is registrable.
Ruling: YES.
That the word “tussin” figures as a component of both
trademarks is nothing to wonder at. The Director of Patents
aptly observes that it is “the common practice in the drug
and pharmaceutical industries to ‘fabricate’ marks by using
syllables or words suggestive of the ailments for which they
are intended and adding thereto distinctive prefixes or
suffixes”. And appropriately to be considered now is the fact
that, concededly, the “tussin” (in Pertussin and Atussin) was
derived from the Latin root-word “tussis” meaning cough.
“Tussin” is merely descriptive; it is generic; it furnishes to the
buyer no indication of the origin of the goods; it is open for
appropriation by anyone. It is accordingly barred from
registration as trademark. With jurisprudence holding the
line, we feel safe in making the statement that any other
conclusion would result in “appellant having practically a
monopoly” of the word “tussin” in a trademark. While “tussin”
by itself cannot thus be used exclusively to identify one’s
goods, it may properly become the subject of a trademark
“by combination with another word or phrase”. And this union
of words is reflected in petitioner’s Pertussin and
respondent’s Atussin, the first with prefix “Per” and the
second with Prefix “A.”
Lim Kiah v. Kaynee Company
FERNANDO, J.:
The dispute in this controversy centered around the right to
use the trademark KAYNEE. Petitioner Lim Kiah, on April 5,
1957, filed an application with the Philippines Patent Office
to register such a trademark allegedly being used by him on
undershirts, polo shirts, T-shirts, pants, sporting wear and
handkerchiefs, asserting further that the date of its first use
went back to January 7, 1957. Such an application was
opposed by the Kaynee Company, one of the respondents
here, a South Carolina corporation. It claimed ownership by
virtue of a registration with the United States Patent Office
on February 18, 1913. It was likewise alleged by it that it
had used the same in the Philippines as far back as 1951,
on goods similar to those being sold by the applicant. Its
opposition likewise stressed that such a trademark had by
then became exceedingly popular in the Philippines enjoying
tremendous amount of goodwill arising from newspaper,
radio and television advertising as well as the high and
superior quality of its products.
Both testimonial and documentary evidence were introduced
before the Philippines Patent
Office. Respondent Kaynee Company adduced proof to the
effect that late in 1949 or early 1950,
the Aguinaldo's Department Store sold therein knitted shirts
as well as polo shirts, cotton sports shirts, swimming trunks
and cotton pajamas coming from it and so identified. There
was also testimony to the effect that KAYNEE products were
advertised in the Philippines. The assertion as to such
advertisement was confirmed by one official of a public
relations and management firm and another from an
advertising agency.
The applicant testified on his own behalf asserting that as of
1957 he had started using such trademark on his products,
the word in Chinese, according to him, being equivalent
to fast in English or mabilis in Tagalog. He referred to the
due investigation he made before filing such application for
registration. He ascertained that no one had previously
registered such trademark in the Philippines. He spoke of
his advertising his products in at least two Manila
newspapers and a weekly magazine.
The Director of Patents concluded that from the facts of
record and the exhibits presented, the opposition by
the Kaynee Company was without merit. Thus: "It is clear
from the testimony of the Opposer's witnesses that it had
never used the trademark in the Philippines through its own
initiative but because of Aguinaldo's importation and retail
activities. It does not appear of record that Opposer had a
direct hand in the introduction of the goods bearing its
trademark into this country. There is no distributorship
agreement between The Kaynee Company and Aguinaldo's,
or for that matter, any local outlet. Neither has there been
shown a license or dealership agreement, an assignment, or
any other document to prove that the Opposer had
authorized Aguinaldo's to market the KAYNEE goods
locally. If ever the word KAYNEE has been known to exist in
this country, it is because of Aguinaldo's trade activities and
not those of the Opposer. It is incumbent upon Opposer not
only to establish prior use of its mark but prior use thereof for
goods related to those of applicant as to be likely to result in
purchaser's ascribing to a common origin."[1] As the
prior use should exist on the part of the oppositor and as in
this case it had not done so, there being no showing either
that it authorized the Aguinaldo'sDepartment Store to use its
trademark, its opposition was dismissed.
It did not result, however, in petitioner Lim Kiah emerging as
the victorious party. As noted in the aforesaid decision of
the Director of Patents of February 22, 1965, "sufficient
grounds exist for the ex parte rejection of
[petitioner's] application." The decision
explained why: "The Opposer was able to prove that the
Respondent-Applicant is not the owner of the trademark
KAYNEE. Under Rule 34 of the Revised Rules of Practice in
Trademark Cases, only the owner of a trademark may apply
for its registration. It has been proven by the evidence for
the Opposer that the trademark KAYNEE had been
advertised in newspapers as early as the year 1953 * * *
through Aguinaldo'sadvertising activities. From that and
subsequent years it has been at least known
to some segment of the purchasing public
that Aguinaldo's was continuously using the trademark
KAYNEE as among those sold in its store. Under Section
4(d) of Republic Act No. 166, a trademark shall not
be registrable if it consists of or comprises a mark which so
resembles a mark registered in the Philippines or a mark
or tradename previously used in Philippine by another and
not abandoned, * * *. It cannot be denied that in this
particular case the word 'another' used by the Statute can
refer to Aguinaldo's."[2] As to his authority to
reject ex parte application for registration, respondent
Director of Patents relied on Englander v. Continental
Distilling Co.[3] The dispositive portion of the above decision
was worded thus: "* * *, the opposition is dismissed for lack
of [merit], but the application of Lim Kiah is
rejected ex parte."[4]
Then came this petition for the review of the above decision
of the Director of Patents, likewise included
as respondent. Petitioner Lim Kiah assigned three alleged
errors, namely, that he had presented evidence "clearly and
fully establishing his ownership" of the trademark, that no
evidence existed to support the ruling that
the Aguinaldo's Department Store had been using such a
trademark, and that the construction fastened on Section
4(d) of Republic Act No. 166 by respondent Director of
Patents ignored other relevant sections.
The appeal cannot prosper. The decision of the Director of
Patents must be sustained. The errors assigned do not call
for its reversal.
The first two of the above errors are factual in character. It is
well-settled that we are precluded from making such an
inquiry as the finding of facts of the Director of Patents in the
absence of any showing that there was a grave abuse of dis-
cretion is binding on us. As set forth by Justice Makalintal in
Chung Te v. Ng Kian Giab:[5] "The rule is that the findings of
fact by the Director of Patents are conclusive on the
Supreme Court provided they are supported by substantial
evidence."
That leaves only the third assigned error, petitioner main-
taining the view that when the Director of Patents relied on
the explicit and literal language of the appropriate
section,[6] to the effect that a trademark shall not
be registrable if it "consists of or comprises a mark or trade-
name * * * previously used in the Philippines by another and
not abandoned," it ignored other relevant provision which
could have called for a different conclusion. Such an
assertion flies in the face of the explicit and categorical
terminology of the act. It is unequivocal in character and
does not call for any interpretation that may result in modify-
ing or changing its meaning.
As early as 1913, in Lizarraga Hermanos v. Yap Tico,[7] it
was stressed that our first and fundamental duty is to apply
the law. Construction and interpretation come only "after it
has been demonstrated that application is impossible and in-
adequate without them." Such a principle has since then
commended itself for acceptance and has been invariably
followed, especially so in not a few of our recent decisions.[8]
It is apparent, therefore, why, as above noted, the appeal is
doomed to failure. The decision of the Director of Patents is
not only sound in law but also commendable for its
consonance with the appropriate ethical standard which by
no means should be excluded from the business world as an
alien, if not a hostile, force. While in the fierce, competitive
jungle which at times constitutes the arena of commercial
transactions, shrewdness and ingenuity are at a premium,
the law is by no means called upon to yield invariably its nod
of approval to schemes frowned upon by the concept of
fairness. Here, petitioner engaged in manufacturing and
selling the same kind ofproducts would rely on a trademark,
which undeniably was previously registered abroad and
which theretofore had been used and advertised extensively
by one of the leading department stores in the Philippines.
Petitioner would have the Director of Patents believe
reliance on what KAYNEE stands for as understood in the
language of his land, possibly even as a mark of ancestral
piety, caused him to make use of it. Such a solemn avowal
did not inevitably call for assent, considering that such a
trademark had long stood for similar products which
undoubtedly were well-known and patronized locally. It did
not improve his standing at all. As a matter of fact, without
his so intending it, the legitimate suspicion did arise that
such a plea while perhaps a tribute to his ingenuity hardly
seemed to betray fidelity to fact. He ought to have been
aware then that both the administrative agencies and the
Judiciary can be trusted to possess enough discernment not
to be taken in by so transparent a verbal ploy.
WHEREFORE, the decision is affirmed, with costs against
petitioner Lim Kiah.
Concepcion, C.J., Reyes, J.B.L., Dizon, Makalintal,
Sanchez, Angeles, and Capistrano, JJ., concur.
Castro, J., concurs in the result.
Zaldivar, J., on official leave.
AMERICAN WIRE v. DIRECTOR OF PATENTS
REYES, J.B.L., J.:
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 (in Inter Partes Case No. 290) 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 2 June 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 29 March 1962. The American Wire and
Cable Co., Inc., another domestic corporation and
authorized user since 10 April 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
trademark DYNAFLEX would cause confusion or result in
mistakes 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 goods, as that of the opposer.
Besides, opposer contended that there has been no
continuous use in commerce of the applicant's mark.
After due hearing, the 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 Ameri-
can Wire & Cable Company dismissed. The latter
interposed the present appeal.
The issue to be resolved in this proceeding is
simple: 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.
In ruling in favor of the herein application, the Director of
Patents said:
"x x x x The applicant's trademark is a composite mark
consisting of the word DYNAFLEX printed in small letters of
the English alphabet except that letter 'D' is capitalized,
within a fanciful device, on top of which is the encircled ini-
tials, in downward sequence, of the Respondent's corporate
name, and Jutting out on two sides of the circle are bolts of
lightning, symbolic of electricity.
"On the other hand, Opposer's trademark is DURAFLEX in
Capitalized print, except that one crosspiece of the letter X is
in the form of a bolt of lightning. The word slants slightly
upward, traversing the center of a figure of the earth or
globe.
"Resorting now to the semantics of the words, it is clear that
both marks are suffixed by the word FLEX. The word
appears in any dictionary having as common meaning 'to
bend'. In Webster's International Dictionary, it is used by the
British on electric cord. However, one mark (Respondent's)
is prefixed with DYNA suggesting power. It is not in itself
a rootword but it has been commonly associated with any
source of power. At most, it could have been derived from
the Greek word 'Dynamis' and, generally, the root words
commonly derived therefrom are 'dynam' and 'dynamo'. The
other (Opposer's) is prefixed with DURA, suggesting
durability, strength and endurance.
"Based on the foregoing comparisons, the trademarks of the
parties are different in appearance, meaning, sound and
connotation and hence, are not confusingly similar."
The pertinent law, 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:
xxxxx xxxxx xxxxx
"(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." (Underlining supplied)
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.
The question is, when is a trademark likely to confuse or
cause the public to mistake one for another? Earlier rulings
of the Court seem to indicate its reliance on
the dominancy test or the assessment of the essential
or dominant features in the competing labels to determine
whether they are confusingly similar.[1] On this matter, the
Court said:
"It has been consistently held that the question of
infringement of a trademark is to be determined by the test
of dominancy.Similarity in size, form, and color, while
relevant, is not conclusive. 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. (C. Neilman Brewing Co. vs.
Independent Brewing Co., 191 F. 489, 495, citing Eagle
White Lead Co. vs. Pflugh [CC] 180 Fed. 579). The question
at issue in cases of infringement of trademarks is whether
the use of the marks involved would be likely to cause
confusion or mistakes in the mind of the public or deceive
purchasers." (Go Tiong vs. Director of Patents, 95 Phil. 1,
cited in Lim Hoa vs. Director of Patents, 100 Phil.214).[2]
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.[3] Thus, in the case of Marvex Commercial Co.
vs. Hawpia & Co.,[4] the registration of the trademark
"Lionpas" for medicated plaster was denied for being
confusingly similar in sound with "Salonpas", a registered
mark also for medicated plaster, the Court saying:
"Two letters of 'SALONPAS' are missing in 'LIONPAS', the
first letter a and the letter s. Be that as it may, when the two
words are pronounced, the sound effects are confusingly
similar. And where goods are advertised over the radio,
similarity in sound is of especial significance (Co Tiong Sa
vs. Director of Patents, 95 Phil. 1, citing Nims, The Law of
Unfair Competition and Trademarks, 4th ed., vol. 2, pp. 678-
679). 'The importance of this rule is emphasized by the
increase of radio advertising in which we are deprived of
help of our eyes and must depend entirely on the ear'
(Operators, Inc. vs. Director of Patents, supra.)"
Along the same line are the rulings denying registration of a
mark containing the picture of a fish (Bangus), as label for
soy sauce, for being similar to another registered brand of
soy sauce that bears the picture of the fish carp; [5] or that of
the mark bearing the picture of two roosters with the word
"Bantam", as label for food seasoning (vetsin), which would
confuse the purchasers of the same article bearing the
registered mark "Hen Brand" that features the picture of a
hen.[6]

The present case is governed by the principles laid down in
the preceding cases. 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.
The Director of Patents has predicated his decision mostly
on the semantic difference and connotation of the prefixes
"Dura" and "Dyna" of the competing trademarks,
unfortunately forgetting that the buyers are less concerned
with the etymology of the words as with their sound and the
dominant features of the design.
Of course, as pointed out in the decision now on appeal,
there are some differences in the mark on the front portion of
the box. But they pale into insignificance in view of the close
resemblance in the general appearance of the box and
the tradenames of the articles. Indeed, measured against
the dominant-feature standard, applicant's mark must be
disallowed. For, undeniably, the dominant and essential
feature of the article is the trademark itself. Unlike in the
case of commodities that are ordinarily picked up by the
purchaser himself from the grocery or market counters,
electric wires are purchased not by their appearance but by
the size (voltage) and length and, most importantly, by
brand. It is even within layman's knowledge that different
brands of wire have different characteristics and properties;
and for an essential building item as electric wires and
supplies, the owner of the building would not dare risk his
property, perhaps his life, on an unknown or untested
brand. He would only demand for what is recognized to be
the best.
Relying on the doctrine enunciated in the Etepha case[7] and
the earlier ruling in Lim Hoa vs. Director of
Patents,[8] applicant-appelleecontends that the DYNAFLEX
mark would not confuse or deceive the buyers and
subscribers of the DURAFLEX brand, because electrical
wires are of great value and the purchasers thereof are
generally intelligent - the architects, engineers and building
contractors. It must be realized, however, that except
perhaps in big constructions, the designing architect or
engineer, or the contractor who will undertake the work of
building, does not himself purchase or place the order for the
purchase of the materials to be used therein. The task is
oftentimes delegated to another. Nor are said technical men
the ones personally laying down the wiring system in the
building that they could possibly check on whether or not the
correct wires are being used. So that even if the engineer or
contractor will specify in the bill of materials the particular
brand of wires needed, there is no certainty that the
desired product will be acquired. For, unlike the pharmacists
or druggists, the dispensers of hardware or electrical
supplies are not generally known to pay as much concern to
the brand of articles asked for by the customer and of a
person who knows the name of the brand but is not
acquainted with its appearance, the likelihood of the
DYNAFLEX product being mistaken for DURAFLEX is not
remote.
Of course, as in all other cases of colorable imitations, the
unanswered riddle is why, of the millions of terms
and combinations of letters and designs available,
the appellee had to choose those so closely similar to
another's trademark if there was no intent to take advantage
of the goodwill generated by the other mark.
FOR THE FOREGOING CONSIDERATIONS, the decision
appealed from is hereby set aside, and the application for
registration of the trademark DYNAFLEX for electric wires,
class 20, is ordered denied. No costs.
CHUA CHE, PETITIONER, VS. PHILIPPINE PATENT
OFFICE AND SY TUO, RESPONDENTS.
PAREDES, J.:
This is a petition to review the decision of the Director of
Patents, in Inter Partes Case No. 161, denying the
application of petitioner Chua Che for the registration of
"T.M. X-7" for use on soap Class 51, being manufactured by
said Chua Che, upon the opposition of respondent Sy Tuo.
Under date of October 30, 1958, Chua Che presented with
the Philippines Patent Office a petition praying ior tho
registration in his favor the trade name of "X-7" the petition,
states:
"The undersigned Chua Che, a citizen of China, a resident of
2804 Limay St., Tondo, Manila, and doing business at same
address, has adopted and used the trademark "X-7", shown
in the accompanying Drawing.
"ln accordance with the requirements of law, the
undersigned declares that this trademark
1. Was first used by him on June 10, 1957.
2. Was first used by him in commerce in or with the
Philippines on June 10, 1957.
3. Has been continously used by him in trade in or with the
Philippines for more than one year.
4. Is, on the date of this application, actually used by himon
the following goods, classified according to the Official
Classification of Goods (Rule 82):
Class 51 Soap
5. Is applied to the goods or to the packages containing the
same, by placing thereon a printed label on which the
trademark is shown, or by directly impressing the mark to the
goods."
The corresponding declaration, which was under oath,
contained, among others, the following:
"3. That he believes himself to be the lawful owner of the
trademark sought to be registered.
4. That the said trademark is in actual use in Commerce in
or with the Philippines not less than two months before this
application is filed.
5. That no other person, partnership, corporation, or
association, to the best of his knowledge and belief, has the
right to use said trademark in the Philippines, either in the
identical form or in any such near resemblance thereto; as
might be calculated to deceive.
Under date of July 6, 1959, an examiner of the Department
of Commerce and Industry, submitted a report,
recommending the allowance of the application, which report
was approved by the Supervising TM Examiner. After the
notice of allowance was published in the Official Gazette, as
required, respondent Sy Tuo presented a "Notice of
Opposition," dated October 15, 1959, anchoring said
opposition on the following allegations:
1. The registration of the trademark "X-7" as applied for by
CHUA CHE will not only violate the rights and interests of
the Oppositor over his registered trademark "X-7 covered by
Certificate of Registration No. 5,000, issued on April 21,
1951, but will also tend to mislead the purchasing public and
make it convenient for unscrupulous dealers to pass oil Hie
poods of the applicant CHUA CHE for those of the oppositor
of SY TUO, to the injury of both the oppositor and the public.
2. The registration of the said trademark "X-7" fn the name of
CHUA QHE will be in violation of, and will run counter to,
Section 4{d), of Republic Act No. 166, as amended, because
it is confusingly similar to the trademark "X-7" covered by
Registration No. 5,000 previously registered to, and being
used by the oppositor and is not abandoned.
The Oppositor Sy Tuo, doing business as Western Cosmetic
Laboratory will rely on the following facts:
(a) Oppositor has prior use of the trademark "X-7" as he
has been using it extensively and continuously since July
31, 1953, while the applicant, Chua Che, allegedly used his
trademark only since June 10, 1957.
(b) expositor's mark "X-7" is distinctive and his invented
mark and not merely an ordinary, common and weak mark.
(c) The oppositor and the applicant use the trademark "X-7"
for allied and closely related products.
(d) The oppositor has spent a huge amount by way of
advertising and popularizing his "X-7" brand.
(e) The oppositor has spent a big amount in expanding his
business for the manufacture of toilet soap and crystal
laundry soap with his already popular "X-7" brand.
(f) The trademark applied for by the applicant Chua Che
consists of the trademark "X-7" and anyone is likely to be
mislead as to the source or origin by the close resemblance
or identity with the trademark "X-7" of the oppositor."
Attached to the Opposition were labels (samples) being used
by oppositor on his products, which clearly show "X-7".
Petitioner herein presented an Answer to Notice of
Oppositions, claiming among others that the grounds of
opposition are not correct, since although it is admitted that
"X-7" is registered in the name of oppositor, said trademark
is not being used on soap, but purely toilet Articles. After the
presentation of the Answer the case was heard, wherein the
parties presented their respective evidcnce, both testimonial
and documentary. In the memoranda of the contenders, they
limited the principal, thus
The registration of the trademark "X-7" in the name of
applicant CHUA CHE will likely mislead the public so as to
make them believe that said goods are manufactured or
sponsored by or in some way in trade associated with
opposer. Applicant CHUA CHE
In Inter Partes proceedings, the principal issue is "priority of
adoption and use." Since opposer has not yet used "X-7"
mark on soap, but will still use it, applicant should be entitled
to the registration of the same.
The Director of Patents rendered judgment on January 18,
1961, the pertinent portions of which read:
"Based on these facts there is no question that opposer's
first use of the trademark X-7 on July 31, 1053, is prior to
applicant's nrst use of the mark on June 10, 1957. The only
question then in this case is whether cr not purchasers of X-
7 perfume, lipstick and nail polish would likely upon seeing
X-7 laundry soap, attribute common origin to the products or
assume that there existed some kind of trade connection
between applicant and opposer.
"Opposer's record shows that he has been using since July
31, 1953 the trademark X-7 on perfume, lipstick and nail
polish; that he has spent substantial amount of money in
building up tiie goodwill of this trademark through
advertisements in all kinds of media through newspapers of
general circulation, by means of billboards in various places
in the Philippines, and also over the radio and television, in
these advertisements opposer spent about P120,000.00.
There is no question that opposor enjoys a valuable goodwill
in the trademark X-7.
"The products of the parties, while specifically different, are
products intended for use in the homo and usually have
common purchasers. Furthermore, the use of X-7 for laundry
soap is but a natural expansion of business of the opposer.
In fact, heren opposer in 1957, prior to the alleged date of
first use by respondent-applicant of the trademark X-7 for
laundry soap on June 10, 1957 had made steps in
expanding the use of this trademark to granulated soap.
Under these circumstances, it is concluded that the average
purchasers are likely to associate X-7 laundry soap with X-7
perfume, lipstick and nail polish or to think that the products
have common origin or sponsorship.
"In view of the above findings, the opposition in this case
should be as it is hereby sustained and consequently
Application Serial No. 6941, of Chu Che, is also hereby
rejected.
"OPPOSITION SUSTAINED."
The above judgment is now before Us, applicant-appellant
claiming that it was error for the Director to conclude that
opposer SY TUO had priority to use the trademark in
question, and that the use by appellant of the trademark "X-
7" on granulated soap to be manufactured and sold by him,
would likely mislead purchasers.
At the very outset, We would like to state that in cases of the
nature of the one at bar, (only questions of law should be
raised, and the only exception to this rule, meaning that
findings of facts may be reviewed, is when such findings are
not supported by substantial evidence (Sec. 2, Rule 44,
Revised Rules). The finding of the Director of Patents Office
to the effect that opposer-appelle Sy Tuo had priority of use
and adoption of the trademark "X-7", is for all intents and
purposes, one of fact. This being the case, such finding
becomes conclusive to this Court. Even on this sole issue
alone, the petition for review must fall.
However, there are other matters which must be clarified.
For instance, the fact that appellee has not yet used the
trademark "X-7" on granulated soap, the product on which
appellant wants to use the said trademark. The circumstance
of non-actual use of the mark "X-7" on granulated soap by
appellee, does not detract, from the fact that he has already
a right to such a trademark and should, therefore, be
protected. The observation of the Director of Patents to the
effect that "the average purchasers are likely to associate X-
7 laundry soap with X-7 perfume, lipstick and nail polish or to
think that the products have common origin or sponsorship,"
is indeed well taken. It has been pointed out by appellant
that the product upon which the trademark X-7 will be used
(laundry soap) is different from those of appellee's, and
therefore no infringement and, or confusion may result. We
find no merit in the above contention, for it has been held
that while it is no longer necessary to establish that the
goods of the parties possess the same descriptive
properties, as previously required under the Trade Mark Act
of 1905, registration of a trademark should be refused in
cases where there is a likelihood of confusion, mistake, or
deception, even though the goods fall into different
categories. (Application of Sylvan Sweets Co., 205 F. 2nd,
207.) The products of appellee are common household items
now-a-days, in the same manner as laundry soap. The
likelihood of purchasers to associate these products to a
common origin is not farfetched. Both from the standpoint of
priority of use and for the protection of the buying public and,
of course, appellee's rights to the trademark "X-7", it
becomes manifest that the registration of said trademark in
favor of applicant-appellant should be denied.
Premises considered, the decision sought to be reviewed
should be, as it is hereby affirmed in all respects, with costs
against appellant CHUA CHE in both instances.
246 Corporation V. Daway G.R. No. 157216. November
20, 2003
Lessons Applicable: Jurisdiction of Trial court, special
affirmative defences on infringement
Laws Applicable:
FACTS:
• Montres Rolex S.A. and Rolex Centre Phil., Limited,
owners/proprietors of Rolex and Crown Device, filed against
246 Corporation the instant suit for trademark infringement
and damages with prayer for the issuance of a restraining
order or writ of preliminary injunctionbefore the RTC of QC
o July 1996: 246 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.”
• 246 answered special affirmative defences: 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
• RTC: quashed the subpoena ad testificandum and
denied petitioner’s motion for preliminary hearing on
affirmative defenses with motion to dismiss
• CA: affirmed
ISSUE: W/N RTC performed a grave abuse of discretion
HELD: NO. petition denied. RTC affirmed
• The issue of whether or not a trademark infringement
exists, is a question of fact that could best be determined by
the trial court.
• Section 123.1(f) of the Intellectual Property Code
(Republic Act No. 8293) o(f) Is identical with, or confusingly
similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to goods
or services which are not similar to those with respect to
which registration is applied for: Provided, That use of the
mark in relation to those goods or services would indicate a
connection between those goods or services, and the owner
of the registered mark: Provided, further, That the interest of
the owner of the registered mark are likely to be damaged by
such use
• Section 123.1(f) is clearly in point because the Music
Lounge of petitioner is entirely unrelated to respondents’
business involving watches, clocks, bracelets, etc. However,
the Court cannot yet resolve the merits of the present
controversy considering that the requisites for the application
of Section 123.1(f), which constitute the kernel issue at bar,
clearly require determination facts of which need to be
resolved at the trial court. The existence or absence of
these requisites should be addressed in a full blown hearing
and not on a mere preliminary hearing. The respondent
must be given ample opportunity to prove its claim, and the
petitioner to debunk the same.
MCDONALD’S CORP. v. MCJOY
G.R. NO. 166115
February 2, 2007
PONENTE GARCIA; J.
FACTS:
Macjoy Fastfood Corporation (Macjoy), a corporation selling
fried chicken, chicken barbeque, burgers, fries, spaghetti,
palabok, tacos, sandwiches, halo-halo and steaks (fastfood
products) in Cebu City filed with the BPTT-IPO an
application for the registration of the trademark “MACJOY &
DEVICE”.
McDonald’s Corporation, a corporation organized under the
laws of Delaware, USA opposed against the respondent’s
application claiming that such trademark so resembles its
corporate logo (Golden Arches) design and its McDONALD’s
marks such that when used on identical or related goods, the
trademark applied for would confuse or deceive purchasers
into believing that the goods originated from the same
source or origin.
Macjoy on the other hand averred that the it has used the
mark “MACJOY” for tha past many years in good faith and
has spent considerable sums of money for extensive
promotions x x x.
The IPO ratiocinated that the predominance of the
letter “M” and the prefixes “Mac/Mc” in both the Macjoy and
McDonald’s marks lead to the conclusion that there is
confusing similarity between them x x x. Therefore, Macjoy’s
application was denied.
Upon appeal to the CA it favored with MacJoy and against
McDonald’s. The Court of Appeals, in ruling over the case,
actually used the holistic test (which is a test commonly used
in infringement cases). The holistic test looks upon the visual
comparisons between the two trademarks. The justifications
are the following:
1. The word “MacJoy” is written in round script while the
word “McDonald’s is written in single stroke gothic;
2. The word “MacJoy” comes with the picture of a chicken
head with cap and bowtie and wings sprouting on both sides,
while the word “McDonald’s” comes with an arches “M” in
gold colors, and absolutely without any picture of a chicken;
3. The word “MacJoy” is set in deep pink and white color
scheme while the word“McDonald’s” is written in red, yellow,
and black color combination;
4. The facade of the respective stores of the parties, are
entirely different.
ISSUE: Whether there is a confusing similarity between the
McDonald’s marks of the petitioner and the
respondent’s “MACJOY & DEVICE” trademark when it
applied to classes 29 ad 30 of the International Classification
of Goods.
RULING: YES.
The Supreme Court ruled that the proper test to be used is
the dominancy test. The dominancy test not only looks at the
visual comparisons between two trademarks but also the
aural impressions created by the marks in the public mind as
well as connotative comparisons, giving little weight to
factors like prices, quality, sales outlets and market
segments. In the case at bar, the Supreme Court ruled
that “McDonald’s” and “MacJoy” marks are confusingly
similar with each other such that an ordinary purchaser can
conclude an association or relation between the marks. To
begin with, both marks use the corporate “M” design logo
and the prefixes “Mc” and/or “Mac”as dominant features. The
first letter “M” in both marks puts emphasis on the
prefixes “Mc”and/or “Mac” by the similar way in which they
are depicted i.e. in an arch-like, capitalized and stylized
manner. For sure, it is the prefix “Mc,” an abbreviation
of “Mac,” which visually and aurally catches the attention of
the consuming public. Verily, the word “MACJOY” attracts
attention the same way as
did “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big
Mac” and the rest of the MCDONALD’S marks which all use
the prefixes Mc and/or Mac. Besides and most importantly,
both trademarks are used in the sale of fastfood products.
Further, the owner of MacJoy provided little explanation why
in all the available names for a restaurant he chose the
prefix “Mac” to be the dominant feature of the trademark.
The prefix“Mac” and “Macjoy” has no relation or similarity
whatsoever to the name Scarlett Yu Carcel, which is the
name of the niece of MacJoy’s president whom he said was
the basis of the trademark MacJoy. By reason of the
MacJoy’s implausible and insufficient explanation as to how
and why out of the many choices of words it could have used
for its trade-name and/or trademark, it chose the
word “Macjoy,” the only logical conclusion deducible
therefrom is that the MacJoy would want to ride high on the
established reputation and goodwill of the McDonald’s
marks, which, as applied to its restaurant business and food
products, is undoubtedly beyond question.
Mirpuri v. CA (G.R. No. 114508)
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.