G.R. No.

198889

UFC PHILIPPINES, INC. (now merged with NUTRI-ASIA, INC., with NUTRI-
ASIA, INC. as the surviving entity),Petitioner,
vs.
BARRIO FIESTA MANUFACTURING CORPORATION, Respondent.

DECISION

LEONARDO-DE CASTRO, J.:

For our disposition is a petition for review on certiorari under Rule 45 seeking to
annul and set aside the June 23, 2011 Decision1 and the October 4,
2011 Resolution2 of the Court of Appeals in CA-G.R. SP No. 107570, which
reversed and set aside the March 26, 2008 Decision3 of the Bureau of Legal
Affairs of the Intellectual Property Office (IPO-BLA) and the January 29,
2009 Decision4 of the Director General of the IPO.
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing
under Philippine laws.5 It is the emergent entity in a merger with UFC Philippines,
Inc. that was completed on February 11, 2009.6 Respondent Barrio Fiesta
Manufacturing Corporation (respondent) is likewise a corporation organized and
existing under Philippine laws.
On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark
"PAPA BOY & DEVICE" for goods under Class 30, specifically for "lechon
sauce."7 The Intellectual Property Office (IPO) published said application for
opposition in the IP Phil. e-Gazette released on September 8, 2006. The mark
appears as follows:
On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice of
Opposition to the above-mentioned application and alleged that:
1. The mark "PAPA" for use on banana catsup and other similar goods was first
used [in] 1954 by Neri Papa, and thus, was taken from his surname;
2. After using the mark "PAP A" for about twenty-seven (27) years, Neri Papa
subsequently assigned the mark "PAPA" to Heman D. Reyes who, on September
17, 1981, filed an application to register said mark "PAP A" for use on banana
catsup, chili sauce, achara, banana chips, and instant ube powder;
3. On August 14, 1983, Heman D. Reyes was issued Certificate of Registration
No. 32416;
4. [Certificate of] Registration No. 32416 was subsequently assigned to the
following in successive fashion: Acres & Acres Food, Inc., Southeast Asia Food,
Inc., Heinz-UFC Philippines, Inc., and Opposer UFC Philippines, Inc.;
5. Last October 28, 2005, Heinz-UFC Philippines, Inc. filed Application Serial No.
4-2005-010788 which, in effect, is a re-registration of Registration No. 32416
which expired on August 11, 2003;

6. Heman D. Reyes also filed on March 04, 1982 an application to register in the
Supplemental Register the "PAPA BANANA CATSUP Label";
7. On August 11, 1983, Heman D. Reyes was issued Certificate of Registration
No. SR-6282 which was subsequently assigned to Acres & Acres Food, Inc.,
Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc.;
8. After its expiration, Opposer filed on November 15, 2006 Trademark
Application Serial No. 4-2006-012346 for the re-registration of the "PAP A Label
Design";
9. The mark "PAP A KETSARAP" for use on banana sauce falling under Class
30 was also registered in favor of Acres & Acres Food, Inc. under Registration
No. 34681 issued on August 23, 1985 and renewed last August 23, 2005 by
Heinz-UFC Philippines, Inc. for ten (10) years;
10. On November 07, 2006, Registration No. 34681 was assigned to Opposer;
11. Opposer has not abandoned the use of the mark "PAP A" and the variations
thereof as Opposer has continued their use up to the present;
12. The mark "PAPA BOY & DEVICE" is identical to the mark "PAPA" owned by
Opposer and duly registered in its favor, particularly the dominant feature thereof;
13. [With the] dominant feature of respondent-applicant's mark "PAPA BOY &
DEVICE", which is Opposer's "PAPA" and the variations thereof, confusion and
deception is likely to result: The consuming public, particularly the unwary
customers, will be deceived, confused, and mistaken into believing that
respondent-applicant's goods come from Opposer or are authorized by Opposer
to Opposer's prejudice, which is particularly true considering that Opposer's
sister company, Southeast Asia Food, Inc., and its predecessors-in-interest have
been major manufacturers and distributors of lechon sauce and other table
sauces since 1965 under its registered mark "Mang Tomas";
14. Respondent-applicant's mark "PAPA BOY & DEVICE" which nearly
resembles Opposer's mark "PAPA" and the variations thereof will impress upon
the gullible or unsuspecting public that it is the same or related to Opposer as to
source because its dominant part is the same as Opposer's mark and, thus, will
likely be mistaken to be the mark, or related to, or a derivative or variation of,
Opposer's mark;
15. The goods covered by respondent-applicant's application fall under Class 30,
the same Class under which Opposer's goods enumerated in its earlier issued
registrations;
16. The test of dominancy is now explicitly incorporated into law in Section 155 .1
of the IP Code which defines infringement as the colorable imitation of a
registered mark or a dominant feature thereof, and is provided for by
jurisprudence;
17. As a corporation also engaged in the food business, Respondent-applicant
knew and/or ought to know that Opposer and its predecessors-in-interest have
been using the mark "PAPA" and the variations thereof for the last fifty-two (52)
years while its sister company is engaged in the business of manufacturing and
distributing "lechon sauce" and other table sauces for the last forty-one (41)
years;
18. The approval of the subject application will violate Opposer's right to the
exclusive use of its registered mark "PAPA" and the variations thereof per
Section 138 of the IP Code;
19. The approval of the subject application has caused and will continue to cause
great and irreparable damage and injury to Opposer;
20. Respondent-applicant filed the subject application fraudulently and in bad
faith; and
21. Respondent-applicant is not entitled to register the subject mark in its favor.8
In its verified opposition before the IPO, petitioner contended that "PAPA BOY &
DEVICE" is confusingly similar with its "PAPA" marks inasmuch as the former
incorporates the term "PAP A," which is the dominant feature of petitioner's
"PAPA" marks. Petitioner averred that respondent's use of "PAPA BOY &
DEVICE" mark for its lechon sauce product, if allowed, would likely lead the
consuming public to believe that said lechon sauce product originates from or is
authorized by petitioner, and that the "PAPA BOY & DEVICE" mark is a variation
or derivative of petitioner's "PAPA" marks. Petitioner argued that this was
especially true considering that petitioner's ketchup product and respondent's
lechon sauce product are related articles that fall under the same Class 30.9
Petitioner alleged that the registration of respondent's challenged mark was also
likely to damage the petitioner, considering that its former sister company,
Southeast Asia Food, Inc., and the latter's predecessors-in-interest, had been
major manufacturers and distributors of lechon and other table sauces since
1965, such as products employing the registered "Mang Tomas" mark.
In its Verified Answer, respondent argued that there is no likelihood of confusion
between petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY
& DEVICE" trademark. Respondent raised affirmative defenses and we quote the
relevant ones below:
3. Opposer cites several of its following marks in support of its opposition to the
application but an examination of said marks [reveals] that these have already
expired and/or that no confusing similarity exists x xx;
4. Assuming that the mark "PAPA KETSARAP" had been timely renewed on
August 23, 2005 for "banana sauce" under Class 30, the same is not a hindrance
to the successful registration of the mark "PAPA BOY & DEVICE": Jurisprudence
provides that a certificate of registration confers upon the trademark owner the
exclusive right to use its own symbol only to those goods specified in the
certificate subject to the conditions and limitations stated therein;
5. As a result, Opposer's right to use the mark "PAPAKETSARAP" is limited to
the products covered by its certificate of registration which is Class 30 for banana
sauce;
6. Contrary to Opposer's belief, the dominant features of Respondent-applicant's
mark "PAPA BOY & DEVICE" are the words "PAPA BOY" and the representation
of a smiling hog-like character gesturing the thumbs-up sign and wearing a
traditional Filipino hat and scarf while the dominant feature of Opposer's mark
"PAPA KETSARAP" are the words "Papa" and "Ketsarap", not the word "Papa";
and the word "Ketsarap " is more prominently printed and displayed in the
foreground than the word "Papa" for which reasons opposer's reference to the
Dominancy Test fails;
7. Opposer's allegation that the registration of Respondent-applicant's mark
"PAPA BOY & DEVICE" will damage and prejudice the mark "MANG TOMAS" is
irrelevant considering that Opposer's basis for filing this opposition is the alleged
confusing similarity between Respondent-applicant's mark and Opposer's mark
"PAPA KETSARAP", not the mark "MANG TOMAS";
8. Respondent-applicant's mark "PAPA BOY & DEVICE" is neither identical nor
confusingly similar to Opposer's mark "PAPA KETSARAP": Respondent-
applicant's mark "PAPABOY & DEVICE" is an arbitrary mark which differs in
overall sound, spelling, meaning, style, configuration, presentation, and
appearance from Opposer's mark "PAPA KETSARAP";
9. The dissimilarities between the marks are so distinct, thus, confusion is very
unlikely: While Opposer's mark is a plain word mark, Respondent-applicant's
mark "PAPA BOY & DEVICE" is much more intricate and distinctive such as
Opposer's mark not having the words "Lechon Sauce" printed inside a blue
ribbon-like device which is illustrated below the words "PAPA BOY", Opposer's
mark not having a prominent smiling hog-like character gesturing a thumbs-up
sign and wearing a Filipino hat and scarf stands beside the words "PAPA BOY",
and Opposer's mark not having the words "Barrio Fiesta" albeit conspicuously
displayed above the mark, all which leave no doubt in the consumer's mind on
the product that he is purchasing;
10. Aside from the fact that Respondent-applicant's mark "PAPA BOY &
DEVICE" is distinct and different in appearance, spelling, sound, meaning, and
style from Opposer's mark "PAPA KETSARAP", the difference in the goods
covered by both marks is obvious: Since the goods covered by Respondent-
applicant's mark is unrelated and non-competing to those covered by Opposer's
mark, the doctrine allowing the registrations of marks covering unrelated and
non-competing goods as enunciated by the Supreme Court is therefore
applicable in this case;
11. Respondent-applicant's mark cannot be confusingly similar to Opposer's
mark considering that the products covered by these marks are different: While
Respondent-applicant's mark "PAPA BOY & DEVICE" covers lechon sauce
under Class 30, Opposer's mark "PAPA KETSARAP" covers banana sauce;
12. If a consumer is in the market for banana sauce, he will not buy lechon sauce
and vice-versa and as a result, the margin of error in the acquisition of one from
the other is simply remote;
13. Respondent-applicant is the exclusive owner of the mark "PAPA BOY &
DEVICE" for lechon sauce under Class 30: The words "PAPA BOY" is a
combination of the nickname of Bonifacio Ongpauco who is one of Respondent-
applicant's incorporators and founders" BOY"- and the word "PAPA" as Bonifacio
Ongpauco's mother, Sixta P. Evangelista, had been fondly known as "Mama
Chit", making Respondent-applicant the prior adopter, user, and applicant of the
mark "PAPA BOY & DEVICE" in the Philippines;
Respondent-applicant's mark is for lechon sauce while Opposer's mark is for
banana sauce; and
19. The presence of a common prefix "PAPA" in the marks of both parties does
not render said marks identical or confusingly similar: Opposer cannot
exclusively appropriate said prefix considering that other marks such as "Papa
Heinz Pizza", "Papa Heinz Sausage", "Papa Beaver", "Papa Pop", "Pizza Papa
John's & Design", "Papadoods", and "Papa in Wine and Device" are valid and
active.10
Petitioner's mark and its variations appear as follows:

14. To protect its ownership over the mark "PAPA BOY & DEVICE" considering 1. "PAPA" under Registration No. 32416 for Class 29 goods;11
that it is the first to adopt and use said mark, Respondent-applicant applied for its
registration under Application Serial No. 4-2002-002757 for Class 30, and said
application was found registrable by the Examiner as. a consequence of which
the same was recommended for allowance after undergoing a thorough process
of examination, which recommendation was then approved by the Director of the
Bureau of Trademarks (BOT);

15. Respondent-applicant's mark "PAPA BOY & DEVICE" has been

commercially used in the Philippines;

16. Respondent-applicant's mark "PAPA BOY & DEVICE" has been promoted
and advertised for a considerable duration of time and over wide geographical
areas: Respondent-applicant has invested tremendous amount of resources in
the promotion of its mark "PAPA BOY & DEVICE" through various media
including print publications and promotional materials;

17. The widespread local commercial use of the subject mark by Respondent-
applicant to distinguish and identify its various high-quality consumer products
has earned Respondent-applicant a well-deserved business reputation and
goodwill; 2. The mark "PAPA" as it appeared upon re-registration of Certificate No. 32416,
under Application No. 4-2005-010788 for Classes 29 and 30 goods;12
18. Respondent-applicant's mark is distinctive and capable of identifying its
goods and distinguishing them from those offered for sale by others in the market
including Opposer's goods for which reason no confusion will result because
 4. "PAPA KETSARAP" under Certificate of Registration No. 34681, for banana
sauce (Class 30).14

3. "PAPA LABEL DESIGN" under Registration No. 4-2006-012364·13 and

PROCEEDINGS BEFORE THE INTELLECTUAL PROPERTY OFFICE

The case was referred to mediation but the parties failed to arrive at an amicable
settlement. The case was thus set for preliminary conference. Subsequently, the
IPO-BLA directed the parties to file their respective position papers and draft
decisions.

The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's

Opposition and rejecting respondent's application for "PAPA BOY & DEVICE."
The fallo of said decision reads as follows:

WHEREFORE, the VERIFIED NOTICE OF OPPOSITION filed by UFC

Philippines, Inc. is, as it is hereby, SUSTAINED. Consequently, Application Serial
No. 4-2002-002757 for the mark "PAPA BOY & DEVICE" for lechon sauce under
Class 30 filed on April 04, 2002 by Barrio Fiesta Manufacturing Corporation, is,
as it is hereby, REJECTED.
Let the file wrapper of PAPA BOY & Device subject matter of this case be
forwarded to the Bureau of Trademarks (BOT) for appropriate action in
accordance with this Decision.15
Respondent filed an appeal before the IPO Director General, who found it
unmeritorious, and disposed of the case in the following manner:
WHEREFORE, the instant appeal is hereby DISMISSED. Let a copy of this
Decision as well as the trademark application and records be furnished and
returned to the Director of the Bureau of Legal Affairs for appropriate action.
Further, let also the Director of the Bureau of Trademarks and the library of the
Documentation, Information and Technology Transfer Bureau be furnished a
copy of this Decision for information, guidance, and records purposes."16
DECISION OF THE COURT OF APPEALS
Respondent then filed a petition with the Court of Appeals, questioning the above
decision of the IPO Director General that affirmed the decision of the IPO Bureau
of Legal Affairs Director, which disallowed respondent's application for trademark
registration. Respondent's arguments before the Court of Appeals are quoted
below:
A.
REGISTRATION NOS. 32416 AND 42005010788 ISSUED FOR THE "PAPA"
MARK AND REGISTRATION NOS. SR-6282 AND 42006012364 ISSUED FOR
THE TRADEMARK "PAPA BANANA CATSUP LABEL/PAPA LABEL DESIGN"
SHOULD NOT BE USED AS BASIS IN DETERMINING THE EXISTENCE OF
CONFUSING SIMILARITY.
B.
THERE IS NO CONFUSING SIMILARITY BETWEEN PETITIONER-
APPLICANT'S "PAPA BOY & DEVICE" AND RESPONDENT'S "PAPA
KETSARAP" MARK.
C.
PETITIONER-APPLICANT IS ENTITLED TO THE REGISTRATION OF THE
MARK "PAPA BOY & DEVICE."
D.
THE OPPOSITION STATES NO CAUSE OF ACTION, AND HENCE, SHOULD
BE DENIED OUTRIGHT.17
As regards the first ground, the Court of Appeals held:
Records show that respondent UFC has Certificates of Registration for the
trademarks PAPA, PAPA BANANA CATSUP label and PAPA KETSARAP. A
closer look at the respective Certificate[ s] of Registration of the aforementioned
marks, however, reveals that at the time the trademark application of petitioner
was published in the IPO e-Gazette on September 8, 2006, the duration of the
trademark registration of respondent over the marks PAPA and PAPA BANANA
CATSUP have already expired. On the other hand, the mark PAPA KETSARAP
was timely renewed by respondent as shown by the Certificate of Renewal
of Registration issued on September 1, 2006 by the Director of the Bureau
of Trademarks.
Under R.A. No. 8293, as amended by R.A. No. 9150, the duration of a trademark
registration is 10 years, renewable for periods of 10 years each renewal. The
request for renewal must be made within 6 months before or after the expiration
of the registration. Respondent's PAPA mark was not renewed within the period
provided for under RA No. 8293. Its registered term ended on August 11, 2003
but was reapplied for registration only on April 4, 2005. Meanwhile, the mark
PAPA BANANA CATSUP was registered by respondent only in the
Supplemental Register, hence, was not provided any protection. x x x. It is noted
that the PAPA BANANA CATSUP label was applied for registration on November
15, 2006, over three years after the expiration of its registration in the
Supplemental Register of the Philippine Patent Office on August 11, 2003. Thus,
while petitioner has a point that the marks PAPA and PAPA BANANA
CATSUP have already expired and the latter having been afforded no
protection at all and should not be juxtaposed with petitioner's trademark,
respondent can still use the marks PAPA KETSARAP and PAPA BANANA
CATSUP, it appearing that the Intellectual Property Office issued a
Certificate of Registration No. 4-2006-012364 for the latter on April 30, 2007,
to bar the registration of petitioner's "PAPA BOY & DEVICE"
mark.18 (Emphases supplied, citations omitted.)
Anent the second ground, the Court of Appeals ruled in the following manner:
After taking into account the aforementioned doctrines and the factual
circumstances of the case at bar, this Court, after considering the
trademarks involved as a whole, is of the view that petitioner's trademark
"PAP A BOY & DEVICE" is not confusingly similar to respondent's "PAPA
KETSARAP" and "PAPA BANANA CATSUP" trademark. Petitioner's
trademark is "PAPA BOY" as a whole as opposed to respondent's "PAPA".
Although on its label the word "PAPA" is prominent, the trademark should be
taken as a whole and not piecemeal. The difference between the two marks are
conspicuous and noticeable. While respondent's products are both labeled as
banana sauces, that of petitioner Barrio Fiesta is labeled as lechon sauce.
Moreover, it appears on the label of petitioner's product that the said lechon
sauce is manufactured by Barrio Fiesta thus, clearly informing the public [of] the
identity of _the manufacturer of the lechon sauce. As claimed by respondent, its
products have been in commercial use for decades. It is safe to assume then that
the consumers are already aware that "PAPA KETSARAP" and "PAPA BANANA
CATSUP" are products of UFC and not of petitioner or the other way around. In
addition, as correctly pointed out by petitioner, if a consumer is in the market for
banana sauce, he will not buy lechon sauce and vice-versa because aside from
the fact that the labels of both parties' products contain the kind of sauce they are
marketing, the color of the products is visibly different. An ordinary consumer is
familiar with the fact that the color of a banana sauce is red while a lechon sauce
is dark brown. There can be no deception as both products are marketed in
bottles making the distinction visible to the eye of the consumer and the
likelihood of acquiring a wrong sauce, remote. Even if the products are placed
side by side, the dissimilarities between the two marks are conspicuous,
noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in.
Lastly, respondent avers that the word "PAPA" was coined after the surname of
the person who first created and made use of the mark. Admittedly, while "PAPA"
is a surname, it is more widely known as a term of endearment for one's father.
Respondent cannot, therefore, claim exclusive ownership over and singular use
of [the] term. Petitioner was able to explain that it adopted the word "PAPA" in
parallel to the nickname of the founder of Barrio fiesta which is "MAMA CHIT".
"PAPA BOY" was derived from the nickname of one of the incorporators of
herein petitioner, a certain Bonifacio Ongpauco, son of Mama Chit.19 (Emphasis
ours, citation omitted.)
THEORY OF PETITIONER
Thus, petitioner came to this Court, seeking the reversal of the questioned
decision and resolution of the Court of Appeals, and the reinstatement of the
decision of the IPO Director General affirming the decision of the IPO-BLA.
Petitioner raises the following grounds:
I.
The court a quo erred in applying the "holistic test" to determine whether there is
confusing similarity between the contending marks, and in reversing the IPO-BLA
and the Director General's application of the "dominancy test."
II.
The court a quo erred in holding that there is no likelihood of confusion between
the contending marks given that the "PAPA BOY & DEVICE" mark is used on
lechon sauce, as opposed to ketchup products.
III.
The court a quo erred in holding that Petitioner cannot claim exclusive ownership
and use of the "PAP A" mark for its sauce products because "PAPA" is
supposedly a common term of endearment for one's father.20
Under the first ground, petitioner submitted the following arguments:
1. The findings of administrative agencies, if supported by substantial evidence,
are binding upon the courts.21
Petitioner alleges that the Court of Appeals should have respected the ruling of
the IPO Director General, which was consistent with the ruling of the IPO-BLA
and supported by substantial evidence, instead of substituting its findings of fact
for those of the Director General and the IPO-BLA.
2. The dominancy test should have been applied to determine if there is
confusing similarity between the competing marks.22
Petitioner points out that the Director General and the IPO-BLA found that the
dominant feature of the competing marks is the word "PAP A" and the minor
additions to respondent's "PAPA BOY & DEVICE" mark do not negate likelihood
of confusion caused by the latter's use of the dominant word "PAPA." Petitioner
claims that even compared solely to petitioner's "PAPA KETSARAP" mark
(Registration No. 34681), which is conceded to have been timely renewed and to
have never expired, respondent's "PAPA BOY & DEVICE" would still create the
likelihood of confusion.23
According to petitioner, the Court of Appeals based its decision on Mead
Johnson & Co. v. N.V.J. Van Dorp, Ltd.,24 a case decided almost five decades
ago, long before Republic Act No. 8293 or the 1998 Intellectual Property Code
was enforced. Thus, the Court of Appeals erroneously applied the holistic test
since given the nature of the products bearing the competing marks, the
dominancy test should have been applied.
Petitioner claims that "[k]etchup and lechon sauce are common and inexpensive
household products that are sold in groceries and regularly encountered by the
ordinary or common purchaser who is not expected to examine, scrutinize, and
compare the details of the competing marks."25
Petitioner distinguishes this case from Mead Johnson and claims that the
ordinary purchaser of ketchup or lechon sauce is not likely to closely scrutinize
each mark as a whole, for the latter is "undiscemingly rash" and usually in a
hurry, and cannot be expected to take note of the smiling hog-like character or
the blue ribbon-like device with the words "Lechon Sauce." Petitioner argues that
under the Intellectual Property Code, it is not necessary for one to colorably
imitate the competing trademark as a whole. It is sufficient that one imitates a
"dominant feature" of the mark to constitute trademark infringement.
Petitioner asserts that as the IPO-BLA and the Director General observed that
the ordinary purchaser is most likely to notice the words "PAPA BOY," which, in
turn, may lead him to believe that there is a connection between respondent's
lechon sauce and petitioner's ketchup products.
Under the second ground, petitioner argues that the Court of Appeals seemed to
be unmindful that two kinds of confusion may arise from the use of similar or
colorable imitation marks, i.e., confusion of goods (product confusion) and
confusion of business (source or origin confusion). Petitioner claims that it is
reasonable to assume that it may expand its business to producing lechon
sauce, inasmuch as it already produces food sauce products and its Articles of
Incorporation authorizes it to do so.
Petitioner alleges that the IPO-BLA recognized that confusion of business may
arise from respondent's use of its "PAPA BOY & DEVICE" mark for lechon sauce
products, and that the Director-General agreed with the IPO-BLA's findings on
this issue.
Petitioner asserts that ketchup and lechon sauce are undeniably related goods;
that they belong to the same class, i.e., Class 30 of the Nice Classifications; that
they serve practically the same purpose, i.e., to spice up dishes; and that they
are sold in similar bottles in the same shelves in grocery stores. Petitioner argues
that the Court of Appeals had absolutely no basis for stating that a person who is
out to buy ketchup is not likely to buy lechon sauce by mistake, as this analysis
allegedly only applies to "product confusion" and does not consider confusion of
business. Petitioner alleges that "[t]here equally is actionable confusion when a
buyer purchases Respondent's 'PAPA BOY' lechon sauce believing that the said
product is related to or associated with the famous 'PAPA KETSUP' makers."
Petitioner further alleges that "it is reasonable and likely for a consumer to
believe that Respondent's 'PAPA BOY' lechon sauce originated from or is
otherwise connected with Petitioner's line of sauces" and that this is "the precise
evil that recognition of confusion of business seeks to prevent."26
Petitioner avers that "PAPA" is a well-known mark and that it has been in
commercial use as early as 1954 on banana ketchup and similar goods. The
"PAPA" mark is also registered as a trademark and in commercial use in other
parts of the world such as the United States of America and the Middle East.
Petitioner claims that "[b ]eing a trademark that is registered and well-known both
locally and internationally, Petitioner's 'PAPA' marks cannot be appropriated by
another person or entity not only with respect to goods similar to those with
respect to which it is registered, but also with respect to goods which are not
similar to those for which the 'PAPA' marks are registered."27
Under the third ground, petitioner claims that the fact that the word "PAPA" is a
known term of endearment for fathers does not preclude it from being used as a
mark to identify goods. Petitioner claims that their mark falls under a type of mark
known as "arbitrary or fanciful marks," which are "marks that bear no logical
relation to the actual characteristics of the products they represent," are "highly
distinctive and valid," and "are entitled to the greatest protection."28
Petitioner claims that the mark "PAPA" falls under this class of arbitrary marks,
even if "PAPA" is also a common term of endearment for one's father. Petitioner
states that there is no logical connection between one's father and food sauces,
such as ketchup; thus, with respect to ketchup, food sauces, and their related
products, and for the purpose of identifying its products, petitioner claims
exclusive ownership of the term "PAPA" as an arbitrary mark.
Petitioner alleges that if respondent "has a good faith and proud desire to
unmistakably and distinctly identify its lechon sauce product out in the market, it
should have coined a mark that departs from and is distinguished from those of
its competitors." Petitioner claims that respondent, with full knowledge of the
fame and the decades-long commercial use of petitioner's "PAPA" marks, opted
for "PAPA BOY & DEVICE," which obviously is just a "colorable imitation."29
THEORY OF RESPONDENT
In its Comment,30 respondent claims that petitioner's marks have either expired
and/or "that no confusing similarity exists between them and respondent's "PAPA
BOY & DEVICE' mark." Respondent alleges that under Section 15 of Republic
Act No. 166, a renewal application should be filed within six months before the
expiration of the period or within three months after such expiration. Respondent
avers that the expiration of the 20-year term for the "PAPA" mark under
Registration No. 32416 issued on August 11, 1983 was August 11, 2003. The
sixth month before August 11, 2003 was February 11, 2003 and the third month
after August 11, 2003 was November 11, 2003. Respondent claims that the
application that petitioner filed on October 28, 2005 was almost two years late.
Thus, it was not a renewal application, but could only be considered a new
application under the new Trademark Law, with the filing date reckoned on
October 28, 2005. The registrability of the mark under the new application was
examined again, and any certificate issued for the registration of "PAPA" could
not have been a renewal certificate.
As for petitioner's other mark "PAPA BANANA CATSUP LABEL," respondent
claims that its 20-year term also expired on August 11, 2003 and that petitioner
only filed its application for the new "PAPA LABEL DESIGN" on November 15,
2006. Having been filed three years beyond the renewal application deadline,
petitioner was not able to renew its application on time, and cannot claim a
"continuous existence of its rights over the 'PAPA BANANA CATSUP LABEL."'
Respondent claims that the two marks are different from each other and that the
registration of one is independent of the other. Respondent concludes that the
certificate of registration issued for "PAPA LABEL DESIGN" is "not and will never
be a renewal certificate."31
Respondent also avers as follows:
1.3. With regard to the two new registrations of petitioner namely: "PAPA" (Reg.
No. 4-2005-010788) and "PAPA LABEL DESIGN" (Reg. No. 4-2006-012364),
these were filed on October 28, 2005 and November 15, 2006, respectively,
under the Intellectual Property Code (RA 8293), which follows the "first to file"
rule, and were obviously filed later than respondent's "PAPA BOY & DEVICE"
mark filed on April 4, 2002. These new marks filed much later than the opposed
"PAPA BOY & DEVICE" mark cannot, therefore, be used as basis for the
opposition and should in fact, be denied outrightly.
xxxx
A search of the Online Trademark Database of Intellectual Property Office (IPO)
will show that only Registration No. 34681 issued for "PAPA KETSARAP" was
properly renewed on August 23, 2005. xx x Clearly, the registrations of "PAPA"
and "PAPA BANANA CATSUP LABEL" marks under registration nos. 32416 and
SR-6282 respectively, have already expired when Petitioner filed its opposition
proceeding against Respondent's trademark on December 11, 2006. Having
expired, and therefore, no longer legally existing, the "PAPA" and "PAPA
BANANA CATSUP LABEL" marks CANNOT BAR the registration of
respondent's mark. To allow petitioner's expired marks to prevent respondent's
distinct "PAPA BOY & DEVICE" mark from being registered would be the
ultimate absurdity.32
Respondent posits that the Court of Appeals did not err in reversing the decisions
of the administrative agencies, alleging that "[while] it is true that the general rule
is that the factual findings of administrative bodies deserve utmost respect when
supported by evidence, the same is subject to exceptions,"33 and that the Court
of Appeals had justifiable reasons to disregard the factual finding of the IPO.
Here, the Court of Appeals wisely identified certain material facts that were
overlooked by the IPO-BLA and the IPO Director General which it opined, when
correctly appreciated, would alter the result of the case.
Respondent alleges that the IPO-BLA erroneously considered petitioner's marks
"PAPA" and "PAPA BANANA CATSUP LABEL" when it applied the dominancy
test in determining whether petitioner's marks are confusingly similar to those of
respondent's mark "PAPA BOY & DEVICE."
Respondent avers that the IPO-BLA absurdly took emphasis on the mark "PAPA"
to arrive at its decision and did not take into consideration that petitioner's mark
was already expired when respondent applied for the registration of its "PAPA
BOY & DEVICE" mark. Respondent compares its "PAPA BOY & DEVICE" with
the only mark that respondent allegedly has, "PAPA KETSARAP," and found no
confusing similarity between the two.
We quote below respondent's discussion of its application of the dominancy test
to the marks in question:
Applying the Dominancy test, as correctly emphasized by the Court of Appeals,
the dominant feature in respondent's mark is "PAPA BOY" and not "PAPA". It
can be gleaned from respondent's mark that the word "PAPA" was written in the
same font, style and color as the word "BOY". There is also the presence of a
"smiling hog-like character" which is positioned very prominently, both in size and
location in said mark, at glance (sic) even more dominant than the word "PAPA
BOY".
xxxx
On the other hand, the dominant feature in petitioner's mark is "KETSARAP", not
"PAPA". Even an ordinary examiner could observe that the word "KETSARAP" in
petitioner's mark is more prominently printed than the word "PAPA".
xxxx
In a dominancy test, the prominent feature of the competing trademarks must be
similar to cause confusion or deception. x x x.34
Verily, respondent's dominant feature "PAPA BOY" and the smiling hog-like
character and petitioner's dominant feature "KETSARAP", being the word written
in a larger font, are neither confusing nor deceiving to the public. In fact, the
differences between their dominant marks are very noticeable and conspicuous
to every purchaser.
Furthermore, the Supreme Court in Societe des Produits Nestle, SA. v. Dy [ 641
Phil. 345], applied the dominancy test by taking into account the aural effects of
the words and letters contained in the marks in determining the issue of
confusing similarity. Obviously, petitioners' "PAPA KETSARAP" mark does not in
any way sounds (sic) like respondent's "PAPA BOY" mark. The common prefix
"PAPA" does not render the marks aurally the same. As discussed above, the
dominant feature in petitioner's mark is "KETSARAP" and the dominant feature in
respondent's mark is "PAPA BOY". Thus, the words "KETSARAP" and "PAP A
BOY" in petitioner's and respondent's respective marks are obviously different in
sound, making "PAPA BOY & DEVICE" even more distinct from petitioner's
"PAPA KETSARAP" mark.35
Using the holistic test, respondent further discusses the differences in the marks
in this wise:
Even the use of the holistic test x x x takes into consideration the entirety of the
marks in question [to] be considered in resolving confusing similarity. The
differences are again very obvious. Respondent's mark has (1) the word "lechon
sauce" printed inside a blue ribbon-like device which is illustrated below the word
"PAPA BOY"; (2) a prominent smiling hog-like character gesturing a thumbs-up
sign and wearing a Filipino hat and scarf stands beside the word "PAPA BOY";
and the word "BARRIO FIESTA" conspicuously displayed above the said
trademark which leaves no doubt in the consumer's mind on the product that he
or she is purchasing. On the other hand, petitioner's mark is the word "PAPA"
enclosed by a cloud on top of the word "KETSARAP' enclosed by a geometrical
figure.
xxxx
In the instant case, the respective marks are obviously different in color scheme,
logo, spelling, sound, meaning and connotation. Thus, yet again, under the
holistic test there can be no confusion or deception between these marks.
It also bears stressing that petitioner's "PAPA KETSARAP" mark covers "banana
catsup" while respondent's "PAPA BOY & DEVICE" covers "lechon sauce'',
thereby obliterating any confusion of products of both marks as they travel
different channels of trade. If a consumer is in the market for banana catsup, he
or she will not buy lechon sauce and vice-versa. As a result, the margin of error
in the acquisition of one for the other is simply remote. Lechon sauce which is
liver sauce is distinct from catsup extracted/ made from banana fruit. The flavor
and taste of a lechon sauce are far from those of a banana catsup. Lechon sauce
is sauce for "lechon" while banana catsup is apparently catsup made from
banana.36
Respondent also contends that "PAPA BOY & DEVICE" mark is not confusingly
similar to petitioner's trademark "PAPA KETSARAP" in terms of appearance,
sound, spelling and meaning. The difference in nature, usage, taste and
appearance of products decreases the possibility of deception among buyers.37
Respondent alleges that since petitioner merely included banana catsup as its
product in its certificate, it cannot claim any further right to the mark "PAPA
KETSARAP" on products other than banana catsup. Respondent also alleges
that petitioner cannot raise "international notoriety of the mark" for the first time
on appeal and that there is no proof that petitioner's mark is internationally well-
known.38
Furthermore, respondent argues that petitioner cannot claim exclusive ownership
over the use of the word "PAPA," a term of endearment for one's father.
Respondent points out that there are several other valid and active marks owned
by third parties which use the word "PAPA," even in classes of goods similar to
those of petitioner's. Respondent avers that petitioner's claim that its "PAPA"
mark is an arbitrary mark is belatedly raised in the instant petition, and cannot be
allowed because the "PAPA KETSARAP" mark would immediately bring the
consuming public to thinking that the product involved is catsup and the
description of said catsup is "masarap" (delicious) and due to the logical relation
of the petitioner's mark to the actual product, it being descriptive or generic, it is
far from being arbitrary or fanciful.39
Lastly, respondent claims that the Court of Appeals correctly ruled that
respondent's product cannot be confused as originating from the petitioner. Since
it clearly appears in the product label of the respondent that it is manufactured by
Barrio Fiesta, the public is dutifully informed of the identity of the lechon sauce
manufacturer. The Court of Appeals further took into account the fact that
petitioner's products have been in commercial use for decades.40
Petitioner, in its Reply41 to respondent's Comment, contends that respondent
cannot invoke a prior filing date for the "PAPA BOY" mark as against Petitioner's
"PAPA" and "PAPA BANANA CATSUP LABEL" marks, because the latter marks
were still registered when respondent applied for registration of its "PAPA BOY"
mark. Thus, the IPO-BLA and Director General correctly considered them in
deciding whether the "PAPA BOY" mark should be registered, using the "first to
file" rule under Section 123.l(d) of Republic Act No. 8293, or the Intellectual
Property Code (IP Code).
Petitioner reiterates its argument that the Court of Appeals erred in applying the
holistic test and that the proper test under the circumstances is the dominancy
test, which was correctly applied by the IPO-BLA and the Director General.42
THIS COURT'S RULING
The petition has merit.
We find that the Court of Appeals erred in applying the holistic test and in
reversing and setting aside the decision of the IPO-BLA and that of the IPO
Director General, both of which rejected respondent's application for the mark
"PAPA BOY & DEVICE."
In Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,43 we defined a trademark as
"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."
We held that a trademark is "an intellectual property deserving protection by law."
The rights of the trademark owner are found in the Intellectual Property Code,
which provides:
Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall
have the exclusive right to prevent all third parties not having the owner's consent
from using in the course of trade identical or similar signs or containers for goods
or services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of confusion.
In case of the use of an identical sign for identical goods or services, a likelihood
of confusion shall be presumed.
Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1.
A person who has identified in the mind of the public the goods he manufactures
or deals in, his business or services from those of others, whether or not a
registered mark is employed, has a property right in the goodwill of the said
goods, business or services so identified, which will be protected in the same
manner as other property rights.
The guideline for courts in determining likelihood of confusion is found in A.M.
No. 10-3-10-SC, or the Rules of Procedure for Intellectual Property Rights
Cases, Rule 18, which provides:
RULE 18
Evidence in Trademark Infringement and Unfair Competition Cases
SECTION 1. Certificate of Registration. - A certificate of registration of a mark
shall be prima facie evidence of:
a) the validity of the registration;
b) the registrant's ownership of the mark; and
c) the registrant's exclusive right to use the same in connection
with the goods or services and those that are related thereto
specified in the certificate.
xxxx
SECTION 3. Presumption of Likelihood of Confusion. - Likelihood of confusion
shall be presumed in case an identical sign or mark is used for identical goods or
services.
SECTION 4. Likelihood of Confusion in Other Cases. - In determining whether
one trademark is confusingly similar to or is a colorable imitation of another, the
court must consider the general impression of the ordinary purchaser, buying
under the normally prevalent conditions in trade and giving the attention such
purchasers usually give in buying that class of goods. Visual, aural, connotative
comparisons and overall impressions engendered by the marks in controversy as
they are encountered in the realities of the marketplace must be taken into
account. Where there are both similarities and differences in the marks, these
must be weighed against one another to see which predominates.
In determining likelihood of confusion between marks used on non-identical
goods or services, several factors may be taken into account, such as, but not
limited to:
a) the strength of plaintiffs mark;
b) the degree of similarity between the plaintiffs and the
defendant's marks;
c) the proximity of the products or services;
 d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
"Colorable imitation" denotes such a close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the original as
to deceive an ordinary purchaser giving such attention as a purchaser usually
gives, as to cause him to purchase the one supposing it to be the other.
SECTION 5. Determination of Similar and Dissimilar Goods or Services. - Goods
or services may not be considered as being similar or dissimilar to each other on
the ground that, in any registration or publication by the Office, they appear in
different classes of the Nice Classification.
In this case, the findings of fact of the highly technical agency, the Intellectual
Property Office, which has the expertise in this field, should have been given
great weight by the Court of Appeals. As we held in Berris Agricultural Co., Inc. v.
Abyadang44:
R.A. No. 8293 defines a "mark" as any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. It also defines a "collective mark" as any
visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristic, including the quality
of goods or services of different enterprises which use the sign under the control
of the registered owner of the collective mark.
On the other hand, R.A. No. 166 defines a "trademark" as 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 another. A trademark, being a
special property, is afforded protection by law. But for one to enjoy this legal
protection, legal protection ownership of the trademark should rightly be
established.
The ownership of a trademark is acquired by its registration and its actual use by
the manufacturer. or distributor of the goods made available to the purchasing
public. Section 122 of R.A.. No. 8293 provides that the rights in a mark shall be
acquired by means of its valid registration with the IPO. A certificate of
registration of a mark, once issued, constitutes prima facie evidence of the
validity of the registration, of the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate. R.A. No.
8293, however, requires the applicant for registration or the registrant to file a
declaration of actual use (DAU) of the mark, with evidence to that effect, within
three (3) years from the filing of the application for registration; otherwise, the
application shall be refused or the mark shall be removed from the register. In
other words, the prima facie presumption brought about by the registration of a
mark may be challenged and overcome, in an appropriate action, by proof of the
nullity of the registration or of non-use of the mark, except when excused.
Moreover, the presumption may likewise be defeated by evidence of prior use by
another person, i.e., it will controvert a claim of legal appropriation or of
ownership based on registration by a subsequent user. This is because a
trademark is a creation of use and belongs to one who first used it in trade or
commerce.
The determination of priority of use of a mark is a question of fact. Adoption of
the mark alone does not suffice. One may make advertisements, issue circulars,
distribute price lists on certain goods, but these alone will not inure to the claim of
ownership of the mark until the goods bearing the mark are sold to the public in
the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as
customers, or orders of buyers, best prove the actual use of a mark in trade and
commerce during a certain period of time.
xxxx
Verily, the protection of trademarks as intellectual property is intended not only to
preserve the goodwill and reputation of the business established on the goods
bearing the mark through actual use over a period of time, but also to safeguard
the public as consumers against confusion on these goods. On this matter of
particular concern, administrative agencies, such as the IPO, by reason of
their special knowledge and expertise over matters falling under their
jurisdiction, are in a better position to pass judgment thereon. Thus, their
findings of fact in that regard are generally accorded great respect, if not
finality by the courts, as long as they are supported by substantial
evidence, even if such evidence might not be overwhelming or even
preponderant. It is not the task of the appellate court to weigh once more
the evidence submitted before the administrative body and to substitute its
own judgment for that of the administrative agency in respect to
sufficiency of evidence. (Emphasis added, citations omitted.)
In trademark controversies, each case must be scrutinized according to its
peculiar circumstances, such that jurisprudential precedents should only be
made to apply if they are specifically in point.45 The cases discussed below are
mentioned only for purposes of lifting the applicable doctrines, laws, and
concepts, but not for their factual circumstances, because of the uniqueness of
each case in controversies such as this one.
There are two tests used in jurisprudence to determine likelihood of confusion,
namely the dominancy test used by the IPO, and the holistic test adopted by the
Court of Appeals. In Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading
Corp.,46 we held:
The essential element of infringement under R.A. No. 8293 is that the infringing
mark is likely to cause confusion. In determining similarity and likelihood of
confusion, jurisprudence has developed tests - the Dominancy Test and the
Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public.
Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more consideration
are the aural and visual impressions created by the marks on the buyers of
goods, giving little weight to factors like prices, quality, sales outlets, and market
segments.
xxxx
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.
Applying the Dominancy Test to the case at bar, this Court finds that the use of
the stylized "S" by respondent in its Strong rubber shoes infringes on the mark
already registered by petitioner with the IPO. While it is undisputed that
petitioner's stylized "S" is within an oval design, to this Court's mind, the
dominant feature of the trademark is the stylized "S," as it is precisely the stylized
"S" which catches the eye of the purchaser. Thus, even if respondent did not use
an oval design, the mere fact that it used the same stylized "S", the same being
the dominant feature of petitioner's trademark, already constitutes infringement
under the Dominancy Test.
This Court cannot agree with the observation of the CA that the use of the letter
"S" could hardly be considered as highly identifiable to the products of petitioner
alone. The CA even supported its conclusion by stating that the letter "S" has
been used in so many existing trademarks, the most popular of which is the
trademark "S" enclosed by an inverted triangle, which the CA says is identifiable
to Superman. Such reasoning, however, misses the entire point, which is that
respondent had used a stylized "S," which is the same stylized "S" which
petitioner has a registered trademark for. The letter "S" used in the Superman
logo, on the other hand, has a block-like tip on the upper portion and a round
elongated tip on the lower portion. Accordingly, the comparison made by the CA
of the letter "S" used in the Superman trademark with petitioner's stylized "S" is
not appropriate to the case at bar.
Furthermore, respondent did not simply use the letter "S," but it appears to this
Court that based on the font and the size of the lettering, the stylized "S" utilized
by respondent is the very same stylized "S" used by petitioner; a stylized "S"
which is unique and distinguishes petitioner's trademark. Indubitably, the
likelihood of confusion is present as purchasers will associate the respondent's
use of the stylized "S" as having been authorized by petitioner or that
respondent's product is connected with petitioner's business.
xxxx
While there may be dissimilarities between the appearances of the shoes, to this
Court's mind such dissimilarities do not outweigh the stark and blatant similarities
in their general features.xx x.
Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in
applying the holistic test, ruled that there was no colorable imitation, when it
cannot be any more clear and apparent to this Court that there is colorable
imitation. The dissimilarities between the shoes are too trifling and frivolous that it
is indubitable that respondent's products will cause confusion and mistake in the
eyes of the public. Respondent's shoes may not be an exact replica of
petitioner's shoes, but the features and overall design are so similar and alike
that confusion is highly likely.
xxxx
Neither can the difference in price be a complete defense in trademark
infringement. In McDonald's Corporation v. L.C Big Mak Burger, Inc., this Court
held:
Modem law recognizes that the protection to which the owner of a trademark is
entitled is not limited to guarding his goods or business from actual market
competition with identical or similar products of the parties, but extends to all
cases in which the use by a junior appropriator of a trade-mark or trade-name is
likely to lead to a confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his business into the
field (see 148 ALR 56 et seq; 53 Am. Jur. 576) or is in any way connected with
the activities of the infringer; or when it forestalls the normal potential expansion
of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577). xx x.
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
purchasing public might be mistaken in thinking that petitioner had ventured into
a lower market segment such that it is not inconceivable for the public to think
that Strong or Strong Sport Trail might be associated or connected with
petitioner's brand, which scenario is plausible especially since both petitioner and
respondent manufacture rubber shoes.
Withal, the protection of trademarks as intellectual property is intended not only
to preserve the goodwill and reputation of the business established on the goods
bearing the mark through actual use over a period of time, but also to safeguard
the public as consumers against confusion on these goods. While respondent's
shoes contain some dissimilarities with petitioner's shoes, this Court cannot close
its eye to the fact that for all intents and purpose, respondent had deliberately
attempted to copy petitioner's mark and overall design and features of the shoes.
Let it be remembered, that defendants in cases of infringement do not normally
copy but only make colorable changes. The most successful form of copying is to
employ enough points of similarity to confuse the public, with enough points of
difference to confuse the courts. (Citations omitted.)
The Court discussed the concept of confusion of business in the case of Societe
Des Produits Nestle, S.A. v. Dy, Jr.,47 as quoted below:
Among the elements, the element of likelihood of confusion is the gravamen of
trademark infringement. There are two types of confusion in trademark
infringement: confusion of goods and confusion of business. In Sterling Products
International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, the Court
distinguished the two types of confusion:
Callman notes two types of confusion. The first is the confusion of goods "in
which event the ordinarily prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other." In which case,
"defendant's goods are then bought as the plaintiff's, and the poorer quality of the
former reflects adversely on the plaintiff's reputation." The other is the confusion
of business: "Here though the goods of the parties are different, the defendant's
product is such as might reasonably be assumed to originate with the plaintiff,
and the public would then be deceived either into that belief or into the belief that
there is some connection between the plaintiff and defendant which, in fact, does
not exist."
There are two tests to determine likelihood of confusion: the dominancy test and
holistic test. The dominancy test focuses on the similarity of the main, prevalent
or essential features of the competing trademarks that might cause confusion.
Infringement takes place when the competing trademark contains the essential
features of another. Imitation or an effort to imitate is unnecessary. The question
is whether the use of the marks is likely to cause confusion or deceive
purchasers.
xxxx
In cases involving trademark infringement, no set of rules can be deduced. Each
case must be decided on its own merits. Jurisprudential precedents must be
studied in the light of the facts of each particular case. In McDonald's Corporation
v. MacJoy Fastfood Corporation, the Court held:
In trademark cases, particularly in ascertaining whether one trademark is
confusingly similar to another, no set rules can be deduced because each case
must be decided on its merits. In such cases, even more than in any other
litigation, precedent must be studied in the light of the facts of the particular case.
That is the reason why in trademark cases, jurisprudential precedents should be
applied only to a case if they are specifically in point.
In the light of the facts of the present case, the Court holds that the dominancy
test is applicable. In recent cases with similar factual milieus, the Court has
consistently applied the dominancy test. x x x.
xxxx
In McDonald's Corporation v. MacJoy Fastfood Corporation, the Court applied
the dominancy test in holding that "MACJOY" is confusingly similar to
"MCDONALD'S." The Court held:
While we agree with the CA's detailed enumeration of differences between the
two (2) competing trademarks herein involved, we believe that the holistic test is
not the one applicable in this case, the dominancy test being the one more
suitable. In recent cases with a similar factual milieu as here, the Court has
consistently used and applied the dominancy test in determining confusing
similarity or likelihood of confusion between competing trademarks.
xxxx
Applying the dominancy test to the instant case, the Court finds that herein
petitioner's "MCDONALD'S" and respondent's "MACJOY" marks are confusingly
similar with each other 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. x x x.
For sure, it is the prefix "Mc," and 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," "Mac Fries," "Mc Spaghetti,"
"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. Indisputably, the respondent's trademark application for the "MACJOY
& DEVICE" trademark covers goods under Classes 29 and 30 of the International
Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries,
spaghetti, etc. Likewise, the petitioner's trademark registration for the
MCDONALD'S marks in the Philippines covers goods which are similar if not
identical to those covered by the respondent's application.
In McDonald's Corporation v. L. C. Big Mak Burger, Inc., the Court applied the
dominancy test in holding that "BIG MAK" is confusingly similar to "BIG MAC."
The Court held:
This Court x x x has relied on the dominancy test rather than the holistic test. The
dominancy test considers the dominant features in the competing marks in
determining whether they are confusingly similar. Under the dominancy test,
courts give greater weight to the similarity of the appearance of the product
arising from the adoption of the dominant features of the registered mark,
disregarding minor differences. Courts will consider more 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.
Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled:
x x x 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. (G. Heilman 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. (Auburn Rubber Corporation vs. Hanover Rubber
Co., 107 F. 2d 588; xx x)
xxxx
The test of dominancy is now explicitly incorporated into law in Section 155.l of
the Intellectual Property Code which defines infringement as the "colorable
imitation of a registered mark x x x or a dominant feature thereof."
Applying the dominancy test, the Court finds that respondents' use of the "Big
Mak" mark results in likelihood of confusion. First, "Big Mak" sounds exactly the
same as "Big Mac." Second, the first word in "Big Mak" is exactly the same as
the first word in "Big Mac." Third, the first two letters in "Mak" are the same as the
first two letters in "Mac." Fourth, the last letter "Mak" while a "k" sounds the same
as "c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k"
replaces "c" in spelling, thus "Caloocan" is spelled "Kalookan."
In Societe Des Produits Nestle, SA. v. Court of Appeals, the Court applied the
dominancy test in holding that "FLAVOR MASTER" is confusingly similar to
"MASTER ROAST" and "MASTER BLEND." The Court held:
While this Court agrees with the Court of Appeals' detailed enumeration of
differences between the respective trademarks of the two coffee products, this
Court cannot agree that totality test is the one applicable in this case. Rather, this
Court believes that the dominancy test is more suitable to this case in light of its
peculiar factual milieu.
Moreover, the totality or holistic test is contrary to the elementary postulate of the
law on trademarks and unfair competition that confusing similarity is to be
determined on the basis of visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy as they are encountered in
the realities of the marketplace. The totality or holistic test only relies on visual
comparison between two trademarks whereas the dominancy test relies not only
on the visual but also on the aural and connotative comparisons and overall
impressions between the two trademarks.
For this reason, this Court agrees with the BPTTT when it applied the test of
dominancy and held that:
xxxx
The scope of protection afforded to registered trademark owners is not
limited to protection from. infringers with identical goods.1âwphi1 The
scope of protection extends to protection from infringers with related
goods, and to market areas that are the normal expansion of business of
the registered trademark owners. Section 138 of R.A. No. 8293 states:
Certificates of Registration. - A certificate of registration of a mark shall be prima
facie evidence of validity of the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use the same in connection with
the goods or services and those that are related thereto specified in the
certificate. x x x.
In Mighty Corporation v. E. & J Gallo Winery, the Court held that, "Non-
competing goods may be those which, though they are not in actual competition,
are so related to each other that it can reasonably be assumed that they originate
from one manufacturer, in which case, confusion of business can arise out of the
use of similar marks." In that case, the Court enumerated factors in determining
whether goods are related: (1) classification of the goods; (2) nature of the
goods; (3) descriptive properties, physical attributes or essential characteristics
of the goods, with reference to their form, composition, texture or quality; and (4)
style of distribution and marketing of the goods, including how the goods are
displayed and sold.
xxxx
x x x. However, as the registered owner of the "NAN" mark, Nestle should be
free to use its mark on similar products, in different segments of the
market, and at different price levels. In McDonald's Corporation v. L.C. Big
Mak Burger, Inc., the Court held that the scope of protection afforded to
registered trademark owners extends to market areas that are the normal
expansion of business:
xxxx
Even respondent's use of the "Big Mak" mark on non-hamburger food products
cannot excuse their infringement of petitioners' registered mark, otherwise
registered marks will lose their protection under the law.
The registered trademark owner may use his 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 has recognized that the registered trademark owner
enjoys protection in product and market areas that are the normal potential
expansion of his business. Thus, the Court has declared:
Modern law recognizes that the protection to which the owner of a trademark is
entitled is not limited to guarding his goods or business from actual market
competition with identical or similar products of the parties, but extends to all
cases in which the use by a junior appropriator of a trade-mark or trade-name is
likely to lead to a confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his business into the
field (see 148 ALR 56 et sq; 53 Am. Jur. 576) or is in any way connected with the
activities of the infringer; or when it forestalls the normal potential expansion of
his business (v. 148 ALR, 77, 84; 52 Arn. Jur. 576, 577). (Emphases supplied,
citations omitted.)
Again, this Court discussed the dominancy test and confusion of business
in Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,48 and we quote:
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.l 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 xx x.
xxxx
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.
xxxx
We agree with the findings of the IPO. As correctly applied by the IPO in this
case, 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.
xxxx
Further, 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, we have held-
Modern law recognizes that the protection to which the owner of a
trademark is entitled is not limited to guarding his goods or
business from actual market competition with identical or similar
products of the parties, but extends to all cases in which the use
by a junior appropriator of a trade-mark or trade-name is likely to
lead to a confusion of source, as where prospective
purchasers would be misled into thinking that the
complaining party has extended his business into the
field (see 148 ALR 56 et seq; 53 Am Jur. 576) or is in any way
connected with the activities of the infringer; or when it forestalls
the normal potential expansion of his business (v. 148 ALR
77, 84; 52 Am. Jur. 576, 577).
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. (Citations omitted.)
Section 123.l(d) of the IP Code provides:
A mark cannot be registered if it:
xxxx
(d) Is identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of:
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or
cause confusion[.]
A scrutiny of petitioner's and respondent's respective marks would show that the
IPO-BLA and the IPO Director General correctly found the word "PAPA" as the
dominant feature of petitioner's mark "PAPA KETSARAP." Contrary to
respondent's contention, "KETSARAP" cannot be the dominant feature of the
mark as it is merely descriptive of the product. Furthermore, it is the "PAPA" mark
that has been in commercial use for decades and has established awareness
and goodwill among consumers.
We likewise agree with the IPO-BLA that the word "PAPA" is also the dominant
feature of respondent's "PAPA BOY & DEVICE" mark subject of the application,
such that "the word 'PAPA' is written on top of and before the other words such
that it is the first word/figure that catches the eyes."49 Furthermore, as the IPO
Director General put it, the part of respondent's mark which appears prominently
to the eyes and ears is the phrase "PAPA BOY" and that is what a purchaser of
respondent's product would immediately recall, not the smiling hog.
We quote the relevant portion of the IPO-BLA decision on this point below:
A careful examination of Opposer's and Respondent-applicant's respective
marks shows that the word "PAPA" is the dominant feature: In Opposer's marks,
the word "PAPA" is either the mark by itself or the predominant word considering
its stylized font and the conspicuous placement of the word "PAPA" before the
other words. In Respondent-applicant's mark, the word "PAPA" is written on top
of and before the other words such that it is the first word figure that catches the
eyes. The visual and aural impressions created by such dominant word "PAPA"
at the least is that the respective goods of the parties originated from the other,
or that one party has permitted or has been given license to the other to use the
word "PAPA" for the other party's product, or that there is a relation/connection
between the two parties when, in fact, there is none. This is especially true
considering that the products of both parties belong to the same class and are
closely related: Catsup and lechon sauce or liver sauce are both gravy-like
condiments used to spice up dishes. Thus, confusion of goods and of business
may likely result.
Under the Dominancy Test, the dominant features of the competing marks are
considered in determining whether these competing marks are confusingly
similar. Greater weight is given to the similarity of the appearance of the products
arising from the adoption of the dominant features of the registered mark,
disregarding minor differences. The visual, aural, connotative, and overall
comparisons and impressions engendered by the marks in controversy as they
are encountered in the realities of the marketplace are the main considerations
(McDonald's Corporation, et al., v. L. C. Big Mak Burger, Inc., et al., G. R.
No.143993, August 18, 2004; Societe Des Produits Nestle, S. A." et al. v. Court
of Appeals, et al., G. R. No. 112012, April 4, 2001). 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. (Lim Hoa v. Director of
Patents, 100 Phil. 214 [1956]); Co Tiong Sa v. Director of Patents, et al., G. R.
No. L-5378, May 24, 1954). Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to imitate (Lim Hoa v.
Director of Patents, supra, and Co Liang Sa v. Director of Patents, supra). Actual
confusion is not required: Only likelihood of confusion on the part of the buying
public is necessary so as to render two marks confusingly similar so as to deny
the registration of the junior mark (Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838 [1969]).
As to the first issue of whether PAPA BOY is confusingly similar to Opposer's
PAPA mark, this Bureau rules in the affirmative.
The records bear the following:
1. Registration No. 32416 issued for the mark "PAPA" under
Class 29 goods was deemed expired as of February 11, 2004
(Exhibit "A" attached to the VERIFIED NOTICE OF
OPPOSITION). Application Serial No. 4-2005-010788 was filed
on October 28, 2005 for the same mark "PAPA" for Class 30
goods and Registration No. 42005010788 was issued on March
19, 2007;
2. Opposer was issued for the mark "PAPA BANANA CATSUP
LABEL" on August 11, 1983 Registration No. SR-6282 for Class
30 goods in the Supplemental Register, which registration expired
in 2003. Application Serial No. 4-2006-012364 was filed for the
mark "PAPA LABEL DESIGN" for Class 30 goods on November
15, 2006, and Registration No. 42006012364 was issued on April
30, 2007; and
 3. Lastly, Registration No. 34681 for the mark "PAPA
KETSARAP" for Class 30 goods was issued on August 23, 1985
and was renewed on August 23, 2005.
Though Respondent-applicant was first to file the subject application on April 04,
2002 vis-a-vis the mark "PAP A" the filing date of which is reckoned on October
28, 2005, and the mark "PAPA LABEL DESIGN" the filing date of which is
reckoned on November 15, 2006, Opposer was able to secure a registration for
the mark "PAPA KETSARAP" on August 23, 1985 considering that Opposer was
the prior registrant and that its renewal application timely filed on August 23,
2005.
xxxx
Pursuant to [Section 123 .1 (d) of the IP Code], the application for registration of
the subject mark cannot be allowed considering that Opposer was earlier
registrant of the marks PAPA and PAPA KETSARAP which registrations were
timely renewed upon its expiration. Respondent-applicant's mark "PAPA BOY &
DEVICE" is confusingly similar to Opposer's mark "PAPA KETSARAP" and is
applied to goods that are related to Opposer's goods, but Opposer's mark "PAPA
KETSARAP" was registered on August 23, 1985 per Certificate of Registration
No. 34681, which registration was renewed for a period of 10 years counted from
August 23, 2005 per Certificate of Renewal of Registration No. 34681 issued on
August 23, 2005. To repeat, Opposer has already registered a mark which
Respondent-applicant's mark nearly resembles as to likely deceive or cause
confusion as to origin and which is applied to goods to which respondent-
applicant's goods under Class 30 are closely related.1âwphi1
Section 138 of the IP Code provides that a certificate of registration of a mark
is prima facie evidence of the validity of the registration, the registrant's
ownership of the mark, and of the registrant's exclusive right to use the same in
connection with the goods and those that are related thereto specified in the
certificate.50
We agree that respondent's mark cannot be registered. Respondent's mark is
related to a product, lechon sauce, an everyday all-purpose condiment and
sauce, that is not subjected to great scrutiny and care by the casual purchaser,
who knows from regular visits to the grocery store under what aisle to find it, in
which bottle it is contained, and approximately how much it costs. Since
petitioner's product, catsup, is also a household product found on the same
grocery aisle, in similar packaging, the public could think that petitioner had
expanded its product mix to include lechon sauce, and that the "PAPA BOY"
lechon sauce is now part of the "PAPA" family of sauces, which is not unlikely
considering the nature of business that petitioner is in. Thus, if allowed.
registration, confusion of business may set in, and petitioner's hard-earned
goodwill may be associated to the newer product introduced by respondent, all
because of the use of the dominant feature of petitioner's mark on respondent's
mark, which is the word "PAPA." The words "Barrio Fiesta" are not included in
the mark, and although printed on the label of respondent's lechon sauce
packaging, still do not remove the impression that "PAPA BOY" is a product
owned by the manufacturer of "PAPA" catsup, by virtue of the use of the
dominant feature. It is possible that petitioner could expand its business to
include lechon sauce, and that would be well within petitioner's rights, but the
existence of a "PAPA BOY" lechon sauce would already eliminate this possibility
and deprive petitioner of its rights as an owner of a valid mark included in the
Intellectual Property Code.
The Court of Appeals likewise erred in finding that "PAPA," being a common term
of endearment for one's father, is a word over which petitioner could not claim
exclusive use and ownership. The Merriam-Webster dictionary defines "Papa"
simply as "a person's father." True, a person's father has no logical connection
with catsup products, and that precisely makes "PAPA" as an arbitrary mark
capable of being registered, as it is distinctive, coming from a family name that
started the brand several decades ago. What was registered was not the word
"Papa" as defined in the dictionary, but the word "Papa" as the last name of the
original owner of the brand. In fact, being part of several of petitioner's marks,
there is no question that the IPO has found "PAPA" to be a registrable mark.
Respondent had an infinite field of words and combinations of words to choose
from to coin a mark for its lechon sauce. While its claim as to the origin of the
term "PAPA BOY" is plausible, it is not a strong enough claim to overrule the
rights of the owner of an existing and valid mark. Furthermore, this Court cannot
equitably allow respondent to profit by the name and reputation carefully built by
petitioner without running afoul of the basic demands of fair play.51
WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23,
2011 Decision and the October 4, 2011 Resolution of the Court of Appeals in
CA-G.R. SP No. 107570, and REINSTATE the March 26, 2008 Decision of the
Bureau of Legal Affairs of the Intellectual Property Office (IPO-BLA) and the
January 29, 2009 Decision of the Director General of the IPO.
1Rollo, pp. 49-62; penned by Associate Justice Franchito N. Diamante
with Associate Justices Josefina Guevara-Salonga and Mariflor P.
Punzalan Castillo concurring.
2 Id. at 64-65.

SO ORDERED. 3
CA rollo, pp. 234-246.

TERESITA J. LEONARDO-DE CASTRO 4

Id. at 34-44.
Associate Justice
5 In its Certificate of Filing of the Articles and Plan of Merger, it is stated
WE CONCUR: that NUTRI-ASIA, INC. is the "Surviving Corporation" and UFC
PHILIPPINES, INC. is the "Absorbed Corporation" and that "the entire
MARIA LOURDES P.A. SERENO assets and liabilities of UFC PHILIPPINES, INC. will be transferred to and
Chief Justice absorbed by NUTRI-ASIA, INC." (Rollo, p. 66.)
Chairperson
6 In its Amended Articles of Incorporation, it is stated that Nutri-Asia, Inc.
LUCAS P. BERSAMIN ESTELA M. PERLAS-BERNABE was formed to "engage in, operate, conduct and maintain the business of
Associate Justice Associate Justice manufacturing, importing, exporting, buying, selling, distributing or
otherwise dealing in, at wholesale, food products, such as but not limited
to food sauces and condiments which are banana and tomato-based,
FRANCIS H. JARDELEZA
vinegar, fish sauce, convenience meals and foodservice products and
Associate Justice
brewed soy sauce." (Rollo, p. 84.)
CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, I certify that the
conclusions in the above Decision had been reached in consultation before the
case was assigned to the writer of the opinion of the Court's Division.

MARIA LOURDES P.A. SERENO

Chief Justice

Footnotes
G.R. No. 100098 December 29, 1995
EMERALD GARMENT MANUFACTURING CORPORATION, petitioner,
vs.
HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC., respondents.
KAPUNAN, J.:
In this petition for review on certiorari under Rule 45 of the Revised Rules of
Court, Emerald Garment Manufacturing Corporation seeks to annul the decision
of the Court of Appeals dated 29 November 1990 in CA-G.R. SP No. 15266
declaring petitioner's trademark to be confusingly similar to that of private
respondent and the resolution dated 17 May 1991 denying petitioner's motion for
reconsideration.
The record reveals the following antecedent facts:
On 18 September 1981, private respondent H.D. Lee Co., Inc., a foreign
corporation organized under the laws of Delaware, U.S.A., filed with the Bureau
of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for
Cancellation of Registration No. SR 5054 (Supplemental Register) for the
trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs,
jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued
on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing
Corporation, a domestic corporation organized and existing under Philippine
laws. The petition was docketed as Inter Partes Case No. 1558.1
Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art.
VIII of the Paris Convention for the Protection of Industrial Property, averred that
petitioner's trademark "so closely resembled its own trademark, 'LEE' as
previously registered and used in the Philippines, and not abandoned, as to be
likely, when applied to or used in connection with petitioner's goods, to cause
confusion, mistake and deception on the part of the purchasing public as to the
origin of the goods."2
In its answer dated 23 March 1982, petitioner contended that its trademark was
entirely and unmistakably different from that of private respondent and that its
certificate of registration was legally and validly granted.3
On 20 February 1984, petitioner caused the publication of its application for
registration of the trademark "STYLISTIC MR. LEE" in the Principal Register."4
On 27 July 1984, private respondent filed a notice of opposition to petitioner's
application for registration also on grounds that petitioner's trademark was
confusingly similar to its "LEE" trademark.5 The case was docketed as Inter
Partes Case No. 1860.
On 21 June 1985, the Director of Patents, on motion filed by private respondent
dated 15 May 1985, issued an order consolidating Inter Partes Cases Nos. 1558
and 1860 on grounds that a common question of law was involved.6
On 19 July 1988, the Director of Patents rendered a decision granting private
respondent's petition for cancellation and opposition to registration.
The Director of Patents found private respondent to be the prior registrant of the
trademark "LEE" in the Philippines and that it had been using said mark in the
Philippines.7
Moreover, the Director of Patents, using the test of dominancy, declared that
petitioner's trademark was confusingly similar to private respondent's mark
because "it is the word 'Lee' which draws the attention of the buyer and leads him
to conclude that the goods originated from the same manufacturer. It is
undeniably the dominant feature of the mark."8
On 3 August 1988, petitioner appealed to the Court of Appeals and on 8 August
1988, it filed with the BPTTT a Motion to Stay Execution of the 19 July 1988
decision of the Director of Patents on grounds that the same would cause it great
and irreparable damage and injury. Private respondent submitted its opposition
on 22 August 1988.9
On 23 September 1988, the BPTTT issued Resolution No. 88-33 granting
petitioner's motion to stay execution subject to the following terms and
conditions:
1. That under this resolution, Respondent-Registrant is
authorized only to dispose of its current stock using the mark
"STYLISTIC MR. LEE";
2. That Respondent-Registrant is strictly prohibited from further
production, regardless of mode and source, of the mark in
question (STYLISTIC MR. LEE) in addition to its current stock;
3. That this relief Order shall automatically cease upon resolution
of the Appeal by the Court of Appeals and, if the Respondent's
appeal loses, all goods bearing the mark "STYLISTIC MR. LEE"
shall be removed from the market, otherwise such goods shall be
seized in accordance with the law.
SO ORDERED.10
On 29 November 1990, the Court of Appeals promulgated its decision affirming
the decision of the Director of Patents dated 19 July 1988 in all respects.11
In said decision the Court of Appeals expounded, thus:
xxx xxx xxx
Whether or not a trademark causes confusion and is likely to
deceive the public is a question of fact which is to be resolved by
applying the "test of dominancy", meaning, if the competing
trademark contains the main or essential or dominant features of
another by reason of which confusion and deception are likely to
result, then infringement takes place; that duplication or imitation
is not necessary, a similarity in the dominant features of the
trademark would be sufficient.
The word "LEE" is the most prominent and distinctive feature of
the appellant's trademark and all of the appellee's "LEE"
trademarks. It is the mark which draws the attention of the buyer
and leads him to conclude that the goods originated from the
same manufacturer. While it is true that there are other words
such as "STYLISTIC", printed in the appellant's label, such word
is printed in such small letters over the word "LEE" that it is not
conspicuous enough to draw the attention of ordinary buyers
whereas the word "LEE" is printed across the label in big, bold
letters and of the same color, style, type and size of lettering as
that of the trademark of the appellee. The alleged difference is
too insubstantial to be noticeable. Even granting arguendo that
the word "STYLISTIC" is conspicuous enough to draw attention,
the goods may easily be mistaken for just another variation or line
of garments under the ap appelle's "LEE" trademarks in view of
the fact that the appellee has registered trademarks which use
other words in addition to the principal mark "LEE" such as "LEE
RIDERS", "LEESURES" and "LEE LEENS". The likelihood of
confusion is further made more probable by the fact that both
parties are engaged in the same line of business. It is well to
reiterate that the determinative factor in ascertaining whether or
not the marks are confusingly similar to each other 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.
xxx xxx xxx
The appellee has sufficiently established its right to prior use and
registration of the trademark "LEE" in the Philippines and is thus
entitled to protection from any infringement upon the same. It is
thus axiomatic that one who has identified a peculiar symbol or
mark with his goods thereby acquires a property right in such
symbol or mark, and if another infringes the trademark, he
thereby invokes this property right.
The merchandise or goods being sold by the parties are not that
expensive as alleged to be by the appellant and are quite
 ordinary commodities purchased by the average person and at
times, by the ignorant and the unlettered. Ordinary purchasers
will not as a rule examine the small letterings printed on the label
but will simply be guided by the presence of the striking mark
"LEE". Whatever difference there may be will pale in
insignificance in the face of an evident similarity in the dominant
features and overall appearance of the labels of the parties.12
xxx xxx xxx
On 19 December 1990, petitioner filed a motion for reconsideration of the above-
mentioned decision of the Court of Appeals.
Private respondent opposed said motion on 8 January 1991 on grounds that it
involved an impermissible change of theory on appeal. Petitioner allegedly raised
entirely new and unrelated arguments and defenses not previously raised in the
proceedings below such as laches and a claim that private respondent
appropriated the style and appearance of petitioner's trademark when it
registered its "LEE" mark under Registration No. 44220.13
On 17 May 1991, the Court of Appeals issued a resolution rejecting petitioner's
motion for reconsideration and ruled thus:
xxx xxx xxx
A defense not raised in the trial court cannot be raised on appeal
for the first time. An issue raised for the first time on appeal and
not raised timely in the proceedings in the lower court is barred by
estoppel.
The object of requiring the parties to present all questions and
issues to the lower court before they can be presented to this
Court is to have the lower court rule upon them, so that this Court
on appeal may determine whether or not such ruling was
erroneous. The purpose is also in furtherance of justice to require
the party to first present the question he contends for in the lower
court so that the other party may not be taken by surprise and
may present evidence to properly meet the issues raised.
Moreover, for a question to be raised on appeal, the same must
also be within the issues raised by the parties in their pleadings.
Consequently, when a party deliberately adopts a certain theory,
and the case is tried and decided based upon such theory
presented in the court below, he will not be permitted to change
his theory on appeal. To permit him to do so would be unfair to
the adverse party. A question raised for the first time on appeal,
there having opportunity to raise them in the court of origin
constitutes a change of theory which is not permissible on appeal.
In the instant case, appellant's main defense pleaded in its
answer dated March 23, 1982 was that there was "no confusing
similarity between the competing trademark involved. On appeal,
the appellant raised a single issue, to wit:
The only issue involved in this case is whether or
not respondent-registrant's trademark
"STYLISTIC MR. LEE" is confusingly similar with
the petitioner's trademarks "LEE or LEERIDERS,
LEE-LEENS and LEE-SURES."
Appellant's main argument in this motion for reconsideration on
the other hand is that the appellee is estopped by laches from
asserting its right to its trademark. Appellant claims although
belatedly that appellee went to court with "unclean hands" by
changing the appearance of its trademark to make it identical to
the appellant's trademark.
Neither defenses were raised by the appellant in the proceedings
before the Bureau of Patents. Appellant cannot raise them now
for the first time on appeal, let alone on a mere motion for
reconsideration of the decision of this Court dismissing the
appellant's appeal.
 While there may be instances and situations justifying relaxation
of this rule, the circumstance of the instant case, equity would be
better served by applying the settled rule it appearing that
appellant has not given any reason at all as to why the defenses
raised in its motion for reconsideration was not invoked earlier.14
xxx xxx xxx
Twice rebuffed, petitioner presents its case before this Court on the following
assignment of errors:
I. THE COURT OF APPEALS ERRED IN NOT FINDING THAT
PRIVATE RESPONDENT CAUSED THE ISSUANCE OF A
FOURTH "LEE" TRADEMARK IMITATING THAT OF THE
PETITIONER'S ON MAY 5, 1989 OR MORE THAN EIGHT
MONTHS AFTER THE BUREAU OF PATENT'S DECISION
DATED JULY 19, 1988.
II. THE COURT OF APPEALS ERRED IN RULING THAT THE
DEFENSE OF ESTOPPEL BY LACHES MUST BE RAISED IN
THE PROCEEDINGS BEFORE THE BUREAU OF PATENTS,
TRADEMARKS AND TECHNOLOGY TRANSFER.
III. THE COURT OF APPEALS ERRED WHEN IT CONSIDERED
PRIVATE RESPONDENT'S PRIOR REGISTRATION OF ITS
TRADEMARK AND DISREGARDED THE FACT THAT PRIVATE
RESPONDENT HAD FAILED TO PROVE COMMERCIAL
USE THEREOF BEFORE FILING OF APPLICATION FOR
REGISTRATION.15
In addition, petitioner reiterates the issues it raised in the Court of Appeals:
I. THE ISSUE INVOLVED IN THIS CASE IS WHETHER OR NOT
PETITIONER'S TRADEMARK SYTLISTIC MR. LEE, IS
CONFUSINGLY SIMILAR WITH THE PRIVATE
RESPONDENT'S TRADEMARK LEE OR LEE-RIDER, LEE-
LEENS AND LEE-SURES.
II. PETITIONER'S EVIDENCES ARE CLEAR AND SUFFICIENT
TO SHOW THAT IT IS THE PRIOR USER AND ITS
TRADEMARK IS DIFFERENT FROM THAT OF THE PRIVATE
RESPONDENT.
III. PETITIONER'S TRADEMARK IS ENTIRELY DIFFERENT
FROM THE PRIVATE RESPONDENT'S AND THE
REGISTRATION OF ITS TRADEMARK IS PRIMA
FACIE EVIDENCE OF GOOD FAITH.
IV. PETITIONER'S "STYLISTIC MR. LEE" TRADEMARK
CANNOT BE CONFUSED WITH PRIVATE RESPONDENT'S
LEE TRADEMARK.16
Petitioner contends that private respondent is estopped from instituting an action
for infringement before the BPTTT under the equitable principle of laches
pursuant to Sec. 9-A of R.A. No. 166, otherwise known as the Law on Trade-
marks, Trade-names and Unfair Competition:
Sec. 9-A. Equitable principles to govern proceedings. — In
opposition proceedings and in all other inter partes proceedings
in the patent office under this act, equitable principles of laches,
estoppel, and acquiescence, where applicable, may be
considered and applied.
Petitioner alleges that it has been using its trademark "STYLISTIC MR. LEE"
since 1 May 1975, yet, it was only on 18 September 1981 that private respondent
filed a petition for cancellation of petitioner's certificate of registration for the said
trademark. Similarly, private respondent's notice of opposition to petitioner's
application for registration in the principal register was belatedly filed on 27 July
1984.17
Private respondent counters by maintaining that petitioner was barred from
raising new issues on appeal, the only contention in the proceedings below being
the presence or absence of confusing similarity between the two trademarks in
question.18
We reject petitioner's contention.
Petitioner's trademark is registered in the supplemental register. The Trademark
Law (R.A. No. 166) provides that "marks and tradenames for the supplemental
register shall not be published for or be subject to opposition, but shall be
published on registration in the Official Gazette."19 The reckoning point, therefore,
should not be 1 May 1975, the date of alleged use by petitioner of its assailed
trademark but 27 October 1980,20 the date the certificate of registration SR No.
5054 was published in the Official Gazette and issued to petitioner.
It was only on the date of publication and issuance of the registration certificate
that private respondent may be considered "officially" put on notice that petitioner
has appropriated or is using said mark, which, after all, is the function and
purpose of registration in the supplemental register.21 The record is bereft of
evidence that private respondent was aware of petitioner's trademark before the
date of said publication and issuance. Hence, when private respondent instituted
cancellation proceedings on 18 September 1981, less than a year had passed.
Corollarily, private respondent could hardly be accused of inexcusable delay in
filing its notice of opposition to petitioner's application for registration in the
principal register since said application was published only on 20 February
1984.22 From the time of publication to the time of filing the opposition on 27 July
1984 barely five (5) months had elapsed. To be barred from bringing suit on
grounds of estoppel and laches, the delay must be
lengthy.23
More crucial is the issue of confusing similarity between the two trademarks.
Petitioner vehemently contends that its trademark "STYLISTIC MR. LEE" is
entirely different from and not confusingly similar to private respondent's "LEE"
trademark.
Private respondent maintains otherwise. It asserts that petitioner's trademark
tends to mislead and confuse the public and thus constitutes an infringement of
its own mark, since the dominant feature therein is the word "LEE."
The pertinent provision of R.A. No. 166 (Trademark Law) states thus:
Sec. 22. Infringement, what constitutes. — Any person who shall
use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such business; or
reproduce, counterfeit, copy or colorably imitable any such mark
or trade-name and apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in
connection with such goods, business or services; shall be liable
to a civil action by the registrant for any or all of the remedies
herein provided.
Practical application, however, of the aforesaid provision is easier said than
done. In the history of trademark cases in the Philippines, particularly in
ascertaining whether one trademark is confusingly similar to or is a colorable
imitation of another, no set rules can be deduced. Each case must be decided on
its own merits.
In Esso Standard Eastern, Inc. v. Court of Appeals,24 we held:
. . . But likelihood of confusion is a relative concept; to be
determined only according to the particular, and sometimes
peculiar, circumstances of each case. It is unquestionably true
that, as stated in Coburn vs. Puritan Mills, Inc.: "In trademark
cases, even more than in other litigation, precedent must be
studied in the light of the facts of the particular case."
xxx xxx xxx
Likewise, it has been observed that:
In determining whether a particular name or mark is a "colorable
imitation" of another, no all-embracing rule seems possible in
 view of the great number of factors which must necessarily be
considered in resolving this question of fact, such as the class of
product or business to which the article belongs; the product's
quality, quantity, or size, including its wrapper or container; the
dominant color, style, size, form, meaning of letters, words,
designs and emblems used; the nature of the package, wrapper
or container; the character of the product's purchasers; location of
the business; the likelihood of deception or the mark or name's
tendency to confuse;
etc.25
Proceeding to the task at hand, the essential element of infringement is colorable
imitation. This term has been defined as "such a close or ingenious imitation as
to be calculated to deceive ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, and to cause him to purchase the one
supposing it to be the other."26
Colorable imitation does not mean such similitude as amounts to
identity. Nor does it require that all the details be literally copied.
Colorable imitation refers to such similarity in form, content,
words, sound, meaning, special arrangement, or general
appearance of the trademark or tradename with that of the other
mark or tradename in their over-all presentation or in their
essential, substantive and distinctive parts as would likely mislead
or confuse persons in the ordinary course of purchasing the
genuine article.27
In determining whether colorable imitation exists, jurisprudence has developed
two kinds of tests — the Dominancy Test applied in Asia Brewery, Inc. v. Court of
Appeals 28 and other cases 29 and the Holistic Test developed in Del Monte
Corporation v. Court of Appeals 30 and its proponent cases.31
As its title implies, the test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion or deception
and thus constitutes infringement.
xxx xxx xxx
. . . 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 it is necessary that the infringing label should
suggest an effort to imitate. [C. Neilman Brewing Co. v.
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. (Auburn Rubber
Corporation vs. Honover Rubber Co., 107 F. 2d 588; . . .)32
xxx xxx xxx
On the other side of the spectrum, the holistic test mandates that the entirety of
the marks in question must be considered in determining confusing similarity.
xxx xxx xxx
In determining whether the trademarks are confusingly similar, a
comparison of the words is not the only determinant factor. The
trademarks in their entirety as they appear in their respective
labels or hang tags must also be considered in relation to the
goods to which they are attached. The discerning eye of the
observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he
may draw his conclusion whether one is confusingly similar to the
other.33
xxx xxx xxx
Applying the foregoing tenets to the present controversy and taking into account
the factual circumstances of this case, we considered the trademarks involved as
a whole and rule that petitioner's "STYLISTIC MR. LEE" is not confusingly similar
to private respondent's "LEE" trademark.
Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label
the word "LEE" is prominent, the trademark should be considered as a whole and
not piecemeal. The dissimilarities between the two marks become conspicuous,
noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of
jeans. These are not your ordinary household items like catsup, soysauce or
soap which are of minimal cost. Maong pants or jeans are not inexpensive.
Accordingly, the casual buyer is predisposed to be more cautious and
discriminating in and would prefer to mull over his purchase. Confusion and
deception, then, is less likely. In Del Monte Corporation v. Court of Appeals, 34 we
noted that:
. . . Among these, what essentially determines the attitudes of the
purchaser, specifically his inclination to be cautious, is the cost of
the goods. To be sure, a person who buys a box of candies will
not exercise as much care as one who buys an expensive watch.
As a general rule, an ordinary buyer does not exercise as much
prudence in buying an article for which he pays a few centavos as
he does in purchasing a more valuable thing. Expensive and
valuable items are normally bought only after deliberate,
comparative and analytical investigation. But mass products, low
priced articles in wide use, and matters of everyday purchase
requiring frequent replacement are bought by the casual
consumer without great
care. . . .
Second, like his beer, the average Filipino consumer generally buys his jeans by
brand. He does not ask the sales clerk for generic jeans but for, say, a Levis,
Guess, Wrangler or even an Armani. He is, therefore, more or less
knowledgeable and familiar with his preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the
"ordinary purchaser." Cast in this particular controversy, the ordinary purchaser is
not the "completely unwary consumer" but is the "ordinarily intelligent buyer"
considering the type of product involved.
The definition laid down in Dy Buncio v. Tan Tiao Bok 35 is better suited to the
present case. There, the "ordinary purchaser" was defined as one "accustomed
to buy, and therefore to some extent familiar with, the goods in question. The test
of fraudulent simulation is to be found in the likelihood of the deception of some
persons in some measure acquainted with an established design and desirous of
purchasing the commodity with which that design has been associated. The test
is not found in the deception, or the possibility of deception, of the person who
knows nothing about the design which has been counterfeited, and who must be
indifferent between that and the other. The simulation, in order to be
objectionable, must be such as appears likely to mislead the ordinary intelligent
buyer who has a need to supply and is familiar with the article that he seeks to
purchase."
There is no cause for the Court of Appeal's apprehension that petitioner's
products might be mistaken as "another variation or line of garments under
private respondent's 'LEE' trademark".36 As one would readily observe, private
respondent's variation follows a standard format "LEERIDERS," "LEESURES"
and "LEELEENS." It is, therefore, improbable that the public would immediately
and naturally conclude that petitioner's "STYLISTIC MR. LEE" is but another
variation under private respondent's "LEE" mark.
As we have previously intimated the issue of confusing similarity between
trademarks is resolved by considering the distinct characteristics of each case. In
the present controversy, taking into account these unique factors, we conclude
that the similarities in the trademarks in question are not sufficient as to likely
cause deception and confusion tantamount to infringement.
Another way of resolving the conflict is to consider the marks involved from the
point of view of what marks are registrable pursuant to Sec. 4 of R.A. No. 166,
particularly paragraph 4 (e):
CHAPTER II-A.— The Principal Register
(Inserted by Sec. 2, Rep. Act No. 638.)
Sec. 4. Registration of trade-marks, trade-names and service-
marks on the principal register. — There is hereby established a
register of trade-marks, trade-names and service-marks which
 shall be known as the principal register. The owner of a trade-
mark, 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 on the principal
register, unless it:
xxx xxx xxx
(e) Consists of a mark or trade-name which, when applied to or
used in connection with the goods, business or services of the
applicant is merely descriptive or deceptively misdescriptive of
them, or when applied to or used in connection with the goods,
business or services of the applicant is primarily geographically
descriptive or deceptively misdescriptive of them, or is primarily
merely a surname; (Emphasis ours.)
xxx xxx xxx
"LEE" is primarily a surname. Private respondent cannot, therefore, acquire
exclusive ownership over and singular use of said term.
. . . It has been held that a personal name or surname may not be
monopolized as a trademark or tradename as against others of
the same name or surname. For in the absence of contract, fraud,
or estoppel, any man may use his name or surname in all
legitimate ways. Thus, "Wellington" is a surname, and its first
user has no cause of action against the junior user of "Wellington"
as it is incapable of exclusive appropriation.37
In addition to the foregoing, we are constrained to agree with petitioner's
contention that private respondent failed to prove prior actual commercial use of
its "LEE" trademark in the Philippines before filing its application for registration
with the BPTTT and hence, has not acquired ownership over said mark.
Actual use in commerce in the Philippines is an essential prerequisite for the
acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the
Philippine Trademark Law (R.A. No. 166) which explicitly provides that:
CHAPTER II. Registration of Marks and Trade-names.
Sec. 2. What are registrable. — Trade-marks, trade-names, and
service marks owned by persons, corporations, partnerships or
associations domiciled in the Philippines and by persons,
corporations, partnerships, or associations domiciled in any
foreign country may be registered in accordance with the
provisions of this act: Provided, That said trade-marks, trade-
names, or service marks are actually in use in commerce and
services not less than two months in the Philippines before the
time the applications for registration are filed: And Provided,
further, That the country of which the applicant for registration is a
citizen grants by law substantially similar privileges to citizens of
the Philippines, and such fact is officially certified, with a certified
true copy of the foreign law translated into the English language,
by the government of the foreign country to the Government of
the Republic of the Philippines. (As amended.) (Emphasis ours.)
Sec. 2-A. Ownership of trade-marks, trade-names and service-
marks; how acquired. — Anyone who lawfully produces or deals
in merchandise of any kind or who engages in lawful business, or
who renders any lawful service in commerce, by actual use
hereof in manufacture or trade, in business, and in the service
rendered; may appropriate to his exclusive use a trade-mark, a
trade-name, or a service-mark not so appropriated by another, to
distinguish his merchandise, business or services from others.
The ownership or possession of trade-mark, trade-name, service-
mark, heretofore or hereafter appropriated, as in this section
provided, shall be recognized and protected in the same manner
and to the same extent as are other property rights to the law. (As
amended.) (Emphasis ours.)
The provisions of the 1965 Paris Convention for the Protection of Industrial
Property 38 relied upon by private respondent and Sec. 21-A of the Trademark
Law (R.A. No. 166)39 were sufficiently expounded upon and qualified in the recent
case of Philip Morris, Inc. v. Court of Appeals:40
xxx xxx xxx
 Following universal acquiescence and comity, our municipal law xxx xxx xxx
on trademarks regarding the requirement of actual use in the
Philippines must subordinate an international agreement A rule widely accepted and firmly entrenched because it has
inasmuch as the apparent clash is being decided by a municipal come down through the years is that actual use in commerce or
tribunal (Mortisen vs. Peters, Great Britain, High Court of business is a prerequisite in the acquisition of the right of
Judiciary of Scotland, 1906, 8 Sessions, 93; Paras, International ownership over a trademark.
Law and World Organization, 1971 Ed., p. 20). Withal, the fact
that international law has been made part of the law of the land xxx xxx xxx
does not by any means imply the primacy of international law
over national law in the municipal sphere. Under the doctrine of
It would seem quite clear that adoption alone of a trademark
incorporation as applied in most countries, rules of international
would not give exclusive right thereto. Such right "grows out of
law are given a standing equal, not superior, to national
their actual use." Adoption is not use. One may make
legislative enactments.
advertisements, issue circulars, give out price lists on certain
goods; but these alone would not give exclusive right of use. For
xxx xxx xxx trademark is a creation of use. The underlying reason for all these
is that purchasers have come to understand the mark as
In other words, (a foreign corporation) may have the capacity to indicating the origin of the wares. Flowing from this is the trader's
sue for infringement irrespective of lack of business activity in the right to protection in the trade he has built up and the goodwill he
Philippines on account of Section 21-A of the Trademark Law but has accumulated from use of the trademark. Registration of a
the question of whether they have an exclusive right over their trademark, of course, has value: it is an administrative act
symbol as to justify issuance of the controversial writ will depend declaratory of a pre-existing right. Registration does not,
on actual use of their trademarks in the Philippines in line with however, perfect a trademark right. (Emphasis ours.)
Sections 2 and 2-A of the same law. It is thus incongruous for
petitioners to claim that when a foreign corporation not licensed to xxx xxx xxx
do business in the Philippines files a complaint for infringement,
the entity need not be actually using its trademark in commerce in
To augment its arguments that it was, not only the prior registrant, but also the
the Philippines. Such a foreign corporation may have the
prior user, private respondent invokes Sec. 20 of the Trademark Law, thus:
personality to file a suit for infringement but it may not necessarily
be entitled to protection due to absence of actual use of the
emblem in the local market. Sec. 20. Certificate of registration prima facie evidence of validity.
— A certificate of registration of a mark or tradename shall be
a prima facie evidence of the validity of the registration, the
xxx xxx xxx
registrant's ownership of the mark or trade-name, and of the
registrant's exclusive right to use the same in connection with the
Undisputably, private respondent is the senior registrant, having obtained several goods, business or services specified in the certificate, subject to
registration certificates for its various trademarks "LEE," "LEERIDERS," and any conditions and limitations stated therein.
"LEESURES" in both the supplemental and principal registers, as early as 1969
to 1973.41 However, registration alone will not suffice. In Sterling Products
International, Inc. v.Farbenfabriken Bayer Aktiengesellschaft,42 we declared:
The credibility placed on a certificate of registration of one's trademark, or its
weight as evidence of validity, ownership and exclusive use, is qualified. A
registration certificate serves merely as prima facie evidence. It is not conclusive
but can and may be rebutted by controverting evidence.
Moreover, the aforequoted provision applies only to registrations in the principal
register.43 Registrations in the supplemental register do not enjoy a similar
privilege. A supplemental register was created precisely for the registration of
marks which are not registrable on the principal register due to some defects.44
The determination as to who is the prior user of the trademark is a question of
fact and it is this Court's working principle not to disturb the findings of the
Director of Patents on this issue in the absence of any showing of grave abuse of
discretion. The findings of facts of the Director of Patents are conclusive upon the
Supreme Court provided they are supported by substantial evidence.45
In the case at bench, however, we reverse the findings of the Director of Patents
and the Court of Appeals. After a meticulous study of the records, we observe
that the Director of Patents and the Court of Appeals relied mainly on the
registration certificates as proof of use by private respondent of the trademark
"LEE" which, as we have previously discussed are not sufficient. We cannot give
credence to private respondent's claim that its "LEE" mark first reached the
Philippines in the 1960's through local sales by the Post Exchanges of the U.S.
Military Bases in the Philippines46 based as it was solely on the self-serving
statements of Mr. Edward Poste, General Manager of Lee (Phils.), Inc., a wholly
owned subsidiary of the H.D. Lee, Co., Inc., U.S.A., herein private
respondent. 47Similarly, we give little weight to the numerous
vouchers representing various advertising expenses in the Philippines for "LEE"
products. 48 It is well to note that these expenses were incurred only in 1981 and
1982 by LEE (Phils.), Inc. after it entered into a licensing agreement with private
respondent on 11 May 1981.49
On the other hand, petitioner has sufficiently shown that it has been in the
business of selling jeans and other garments adopting its "STYLISTIC MR. LEE"
trademark since 1975 as evidenced by appropriate sales invoices to various
stores and retailers.50
Our rulings in Pagasa Industrial Corp. v. Court of Appeals 51 and Converse Rubber
Corp. v. Universal Rubber Products, Inc.,52respectively, are instructive:
The Trademark Law is very clear. It requires actual commercial
use of the mark prior to its registration. There is no dispute that
respondent corporation was the first registrant, yet it failed to fully
substantiate its claim that it used in trade or business in the
Philippines the subject mark; it did not present proof to invest it
with exclusive, continuous adoption of the trademark which
should consist among others, of considerable sales since its first
use. The invoices submitted by respondent which were dated way
back in 1957 show that the zippers sent to the Philippines were to
be used as "samples" and "of no commercial value." The
evidence for respondent must be clear, definite and free from
inconsistencies. "Samples" are not for sale and therefore, the fact
of exporting them to the Philippines cannot be considered to be
equivalent to the "use" contemplated by law. Respondent did not
expect income from such "samples." There were no receipts to
establish sale, and no proof were presented to show that they
were subsequently sold in the Philippines.
xxx xxx xxx
The sales invoices provide the best proof that there were actual
sales of petitioner's product in the country and that there was
actual use for a protracted period of petitioner's trademark or part
thereof through these sales.
For lack of adequate proof of actual use of its trademark in the Philippines prior
to petitioner's use of its own mark and for failure to establish confusing similarity
between said trademarks, private respondent's action for infringement must
necessarily fail.
WHEREFORE, premises considered, the questioned decision and resolution are
hereby REVERSED and SET ASIDE.
SO ORDERED.
Bellosillo and Hermosisima, Jr., JJ., concur.
Separate Opinions
PADILLA, J., dissenting:
I dissent. I vote deny the petition; I agree with BPTTT and the CA that petitioner's
trademark "STYLISTIC MR. LEE" is confusingly similar to private respondent's
earlier registered trademarks "LEE" or "LEE RIDER, LEE-LEENS and LEE-
SURES" such that the trademark "STYLISTIC MR. LEE" is an infringement of the
earlier registered trademarks.
Separate Opinions
PADILLA, J., dissenting:
I dissent. I vote deny the petition; I agree with BPTTT and the CA that petitioner's
trademark "STYLISTIC MR. LEE" is confusingly similar to private respondent's
earlier registered trademarks "LEE" or "LEE RIDER, LEE-LEENS and LEE-
SURES" such that the trademark "STYLISTIC MR. LEE" is an infringement of the
earlier registered trademarks.
Footnotes
1 Rollo, pp. 3, 27, 53.
2 Id., at 27, 55.
3 Id., at 27, 54.
4 Id., at 3, 27. 5 Id., at 54. 6 Ibid. 7 Id., at 39.
8 Id., at 38. 9 Id., at 4. 10 Id., at 42. 11 Id., at 33.
12 Id., at 31-33. 13 Id., at 175. 14 Id., at 23-25. 15 Id., at 7, 14-15.
16 Ibid. 17 Id., at 12, 158. 18 Id., at 193. 19 The whole paragraph
reads as follows:
Chapter IV-A. — The supplemental register.
Sec. 19-A.
xxx xxx xxx
Marks and trade-names for the supplemental register shall not be
published for or be subject to opposition, but shall be published
on registration in the Official Gazette. Whenever any person
believes that he is or will be damaged by the registration of a
mark or trade-name on this register, he may at any time apply to
the director to cancel such registration. Upon receiving the
application, the director shall give notice thereof to the registrant.
If it is found after a hearing that the registrant was not entitled to
register the mark at the time of his application for registration
thereof, or that the mark was not used by the registrant or has
been abandoned, the registration shall be cancelled by the
director.
20 Supra, see Note 1.
21 Sec. 19-A, R.A. No. 166; La Chemise Lacoste, S.A. v.
Fernandez, 129 SCRA 373 (1984).
22 Supra, see Note 4.
23 Ruben Agpalo, Trademark Law & Practice in the Philippines,
1990, p. 32, citing La Insular v. Jao Oge, 47 Phil. 75, (1924); La
Insular v. Yu So, 45 Phil. 398 (1923).
24 116 SCRA 336 (1982).
25 Jaime N. Salazar, Trademarks and Tradenames, 55 SCRA
422 (1974); See also Colorable Imitation of Trademarks,
Tradenames, Labels, Packages, Wrappers, etc., 16 SCRA 502
(1966).
26 Etepha v. Director of Patents, 16 SCRA 495 (1966).
27 Ruben Agpalo, Trademark Law & Practice in the Philippines,
1990, p. 41.
28 224 SCRA 437 (1993).
29 Co Tiong v. Director of Patents, 95 Phil. 1 (1954); Lim Hoa v.
Director of Patents, 100 Phil. 214 (1956); American Wire & Cable
Co. v. Director of Patents, 31 SCRA 544 (1970); Phil. Nut
Industry, Inc. v. Standard Brands, Inc., 65 SCRA 575 (1975);
Converse Rubber Corp. v. Universal Rubber Products, Inc., 147
SCRA 154 (1987).
30 181 SCRA 410 (1990).
31 Mead Johnson & Co. v. N.V.J. Van Dorp, Ltd., 7 SCRA 771
(1963); Bristol Myers Co. v. Director of Patents, 17 SCRA 128
(1966); Fruit of the Loom, Inc. v. CA, 133 SCRA 405 (1984).
32 Supra, see note 28.
33 Fruit of the Loom, Inc. v. CA, supra, see note 31.
34 Supra, see note 30.
35 42 Phil. 190 (1921).
36 Supra, see note 12.
37 Ruben Agpalo, Trademark Law and Practice in the
Philippines, 1990, p. 18, citing Ang Si Heng v. Wellington Dept.
Store, Inc., 92 Phil. 448 (1953).
38 The Philippines became a signatory thereto on 27 September
1965.
The Paris Convention is essentially a compact among the various
member countries to accord in their own countries to citizens of
the other contracting parties trademark and other rights
comparable to those accorded their own citizens by their
domestic laws. The underlying principle is that foreign nationals
should be given the same treatment in each of the member
countries as that country makes available to its own citizens. In
addition the Convention sought to create uniformity in certain
respects by obligating each nation assure to nationals of
countries of the Union an effective protection against unfair
competition. (Ruben Agpalo, Trademark Law And Practice in the
Philippines, 1990, pp. 200-201.)
39 Sec. 21-A. Any foreign corporation or juristic person to which a
mark or trade-name has been registered or assigned under this
Act may bring an action hereinunder for infringement, for unfair
competition, or false designation of origin and false description,
whether or not it has been licensed to do business in the
Philippines under Act Numbered Fourteen hundred and fifty-nine,
as amended, otherwise known as the Corporation Law, at the
time it brings complaint: Provided, That the country of which the
said foreign or juristic person is a citizen, or in which it is
domiciled, by treaty, convention or law, grants a similar privilege
to corporate or juristic persons of the Philippines. (As amended.)
G.R. No. L-17501 April 27, 1963
MEAD JOHNSON and COMPANY, petitioner,
vs.
N. V. J. VAN DORP, LTD., ET AL., respondents.
Ross Selph and Carrascoso for petitioner.
Manuel Y. Macias for respondent N. V. J. Van Dorp. Ltd.
Office of the Solicitor General for respondent Director of the Patent Office.
BAUTISTA ANGELO, J.:
On June 2, 1956, N. V. J. Van Dorp, Ltd. a corporation organized under the laws
of Netherlands, located and doing business at Gouda, Netherlands, filed an
application for the registration of the trademark "ALASKA and pictorial
representation of a Boy's Head within a rectangular design (ALASKA
disclaimed)." The trademark was published in an issue of the Official Gazette
which was officially released on June 5, 1956.
Mead Johnson & Company, a corporation organized under the laws of Indiana,
U.S.A., being the owner of the trademark "ALACTA" used for powdered half-skim
milk, which was registered with the Patent Office on June 12, 1951, filed an
opposition on the ground that it will be damaged by the said registration as the
trademark "ALASKA" and pictorial representation of a Boy's Head within a
rectangular design (ALASKA disclaimed), used for milk, milk products, dairy
products and infant's foods, is confusingly similar to its trademark "ALACTA".
In answer to the opposition the applicant alleged that its trademark and product
"ALASKA" are entirely different from oppositor's trademark and product
"ALACTA", since applicant's product covers milk, milk products, dairy products
and infant's foods which fall under Class 47 Foods and Ingredients of Foods,
while oppositor's products cover pharmaceutical preparations for nutritional
needs which fall under Class 6, which refers to Medicines and Pharmaceutical
Preparations.
Wherefore, the parties respectfully pray that the foregoing stipulation of facts be
admitted and approved by this Honorable Court, without prejudice to the parties
adducing other evidence to prove their case not covered by this stipulation of
facts. 1äwphï1.ñët
After issues were joined, and after due hearing, the Director of the Patent Office,
on August 26, 1960, rendered decision dismissing the opposition and holding
that the trademark sought to be registered does not sufficiently resemble
oppositor's mark "as to be likely when applied to the goods of the parties to
cause confusion or mistake or to deceive purchasers" even if oppositor's goods,
half-skim powdered and powdered whole milk and those of applicant's
condensed and evaporated milk are similar as they have the same descriptive
properties, both goods being milk products.
Hence, oppositor filed the present petition for review.
Petitioner contends that the Director of the Patent Office erred (1) in holding that
the mark which respondent seeks to register does not resemble petitioner's mark
as to be likely when applied to the goods to cause confusion or mistake or to
deceive purchasers, and (2) in holding that the trademark sought to be registered
has become distinctive based on its extensive sales.
Anent the first point, petitioner seems to dispute the finding of the Director of the Patent Office
by emphasizing the striking similarities existing between the trademark "ALASKA" which is
sought to be registered and that of "ALACTA" which petitioner has long registered for the
protection of its products. Thus, it is argued, in appearance and sound the trademarks
"ALASKA" and "ALACTA" are sufficiently close. The three vowels are the same in both and the
public would pronounce them short accenting on the second syllable. Both marks have the
same number of letters and the vowels are placed on the same position. The general form and
sound of the words are of marked similarity so as to suggest the likelihood of confusion. While
"ALACTA" and "ALASKA" differ entirely in meaning, they are confusingly similar in
appearance. The three letter prefixes of both marks are identical. Both marks end with the
same letter "A". The only difference lies in the letters "CT" in "ALACTA" and "SK" in "ALASKA".
And in support of its contention, petitioner cites the case of Esso Standard Oil Company v. Sun
Oil Company, et al., 46 TMR 444, wherein it was held that SUNVIS and UNIVIS are quite
different in sound and meaning but in their entireties they are confusingly similar in
appearance. Said the Court:
As already noted, it found on the basis of the evidence before it that the
two marks are quite different in sound and meaning but that in their
entireties the marks are confusingly similar in appearance, because of
 their having identical suffixes and three letter prefixes with the same two
letters UN in the same order.
On the other hand, respondent contends that it is not correct to say that in passing on the
question as to whether the two marks are similar only the words "ALASKA" and "ALACTA"
should be taken into account since this would be a most arbitrary way of ascertaining whether
similarity exists between two marks. Rather, respondent contends, the two marks in their
entirety and the goods they cover should be considered and carefully compared to determine
whether petitioner's opposition to the registration is capricious or well-taken. In this connection,
respondent invokes the following rules of interpretation: (1) appellant's mark is to be compared
with all of the oppositor's marks in determining the point of confusion;1 (2) the likelihood of
confusion may be determined by a comparison of the marks involved and a consideration of
the goods to which they are attached;2 and (3) the court will view the marks with respect to the
goods to which they are applied, and from its own observation arrive at a conclusion as to the
likelihood of confusion.3
It is true that between petitioner's trademark "ALACTA" and respondent's
"ALASKA" there are similarities in spelling, appearance and sound for both are
composed of six letters of three syllables each and each syllable has the same
vowel, but in determining if they are confusingly similar a comparison of said
words is not the only determinant factor. The trademarks in their entirety as they
appear in the respective labels must also be considered in relation to the goods
to which they are attached. The discerning eye of the observer must focus not
only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly
similar to the other. Having this view in mind, we believe that while there are
similarities in the two marks there are also differences or dissimilarities which are
glaring and striking to the eye as the former. Thus we find the following
dissimilarities in the two marks:
(a) The sizes of the containers of the goods of petitioner differ from those of
respondent. The goods of petitioner come in one-pound container while those of
respondent come in three sizes, to wit: 14-ounce tin of full condensed full cream
milk; 14-1/2-ounce tin of evaporated milk; and 6-ounce tin of evaporated milk.
(b) The colors too differ. One of petitioner's containers has one single
background color, to wit: light blue; the other has two background colors, pink
and white. The containers of respondent's goods have two color bands, yellowish
white and red.
(c) Petitioner's mark "ALACTA" has only the first letter capitalized and is written
in black. Respondent's mark "ALASKA" has all the letters capitalized written in
white except that of the condensed full cream milk which is in red.
Again, coming to the goods covered by the trademarks in question, we also
notice the following dissimilarities:
In the petitioner's certificate of registration, it appears that the same covers
"Pharmaceutical Preparations which Supply Nutritional Needs" which fall under
Class 6 of the official classification as Medicines and Pharmaceutical
Preparations", thus indicating that petitioner's products are not foods or
ingredients of foods but rather medicinal and pharmaceutical preparations that
are to be used as prescribed by physicians. On the other hand, respondent's
goods cover "milk, milk products, dairy products and infant's foods" as set forth in
its application for registration which fall under an entirely different class, or under
Class 47 which refers to "Foods and Ingredients of Foods", and for use of these
products there is no need or requirement of a medical prescription.
In view of the above dissimilarities, the Director of the Patent Office overruled
petitioner's opposition in the following wise:.
Considering the substantial difference in the marks as displayed on the
respective labels of the parties and considering the distinctiveness of the
mark of applicant, acquired from its extensive sales, it is concluded that
the applicant's mark does not resemble opposer's mark as to be likely
when applied to the goods of the parties to cause confusion or mistake or
to deceive purchasers.
We have examined the two trademarks as they appear in the labels attached to
the containers which both petitioner and respondent display for distribution and
sale and we are impressed more by the dissimilarities than by the similarities
appearing therein in the same manner as the Director of the Patent Office, and
because of this impression we are persuaded that said Director was justified in
overruling petitioner's opposition. Hence, we are not prepared to say that said
Director has erred in overruling said opposition.
WHEREFORE, the decision appealed from is affirmed, with costs against petitioner.
G.R. No. 164321 March 23, 2011
SKECHERS, U.S.A., INC., Petitioner,
vs.
INTER PACIFIC INDUSTRIAL TRADING CORP., and/or INTER PACIFIC TRADING CORP. and/or
STRONG SPORTS GEAR CO., LTD., and/or STRONGSHOES WAREHOUSE and/or STRONG
FASHION SHOES TRADING and/or TAN TUAN HONG and/or VIOLETA T. MAGAYAGA and/or
JEFFREY R. MORALES and/or any of its other proprietor/s, directors, officers, employees and/or
occupants of its premises located at S-7, Ed & Joe's Commercial Arcade, No. 153 Quirino Avenue,
Parañaque City, Respondents.
x - - - - - - - - - - - - - - - - - - - - - - -x
TRENDWORKS INTERNATIONAL CORPORATION, Petitioner-Intervenor,
vs.
INTER PACIFIC INDUSTRIAL TRADING CORP. and/or INTER PACIFIC TRADING CORP. and/or
STRONG SPORTS GEAR CO., LTD., and/or STRONGSHOES WAREHOUSE and/or STRONG
FASHION SHOES TRADING and/or TAN TUAN HONG and/or VIOLETA T. MAGAYAGA and/or
JEFFREY R. MORALES and/or any of its other proprietor/s, directors, officers, employees and/or
occupants of its premises located at S-7, Ed & Joe's Commercial Arcade, No. 153 Quirino Avenue,
Parañaque City, Respondents.
RESOLUTION
PERALTA, J.:
For resolution are the twin Motions for Reconsideration filed by petitioner and
1 DISCRETION IN CONSIDERING MATTERS OF DEFENSE IN A CRIMINAL TRIAL
petitioner-intervenor from the Decision rendered in favor of respondents, dated
November 30, 2006.
At the outset, a brief narration of the factual and procedural antecedents that
transpired and led to the filing of the motions is in order.
The present controversy arose when petitioner filed with Branch 24 of the
Regional Trial Court (RTC) of Manila an application for the issuance of search
warrants against an outlet and warehouse operated by respondents for
infringement of trademark under Section 155, in relation to Section 170 of
Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines.2 In the course of its business, petitioner has registered the trademark
"SKECHERS"3 and the trademark "S" (within an oval design)4 with the Intellectual
Property Office (IPO).
Two search warrants5 were issued by the RTC and were served on the premises
of respondents. As a result of the raid, more than 6,000 pairs of shoes bearing
the "S" logo were seized.
Later, respondents moved to quash the search warrants, arguing that there was
no confusing similarity between petitioner’s "Skechers" rubber shoes and its
"Strong" rubber shoes.
On November 7, 2002, the RTC issued an Order6 quashing the search warrants
and directing the NBI to return the seized goods. The RTC agreed with
respondent’s view that Skechers rubber shoes and Strong rubber shoes have
glaring differences such that an ordinary prudent purchaser would not likely be
misled or confused in purchasing the wrong article.
Aggrieved, petitioner filed a petition for certiorari7 with the Court of Appeals (CA)
assailing the RTC Order. On November 17, 2003, the CA issued a
Decision8 affirming the ruling of the RTC.
Subsequently, petitioner filed the present petition9 before this Court which puts
forth the following assignment of errors:
A. WHETHER THE COURT OF APPEALS COMMITTED GRAVE ABUSE OF
FOR TRADEMARK INFRINGEMENT IN PASSING UPON THE VALIDITY OF THE
SEARCH WARRANT WHEN IT SHOULD HAVE LIMITED ITSELF TO A
DETERMINATION OF WHETHER THE TRIAL COURT COMMITTED GRAVE
ABUSE OF DISCRETION IN QUASHING THE SEARCH WARRANTS.
B. WHETHER THE COURT OF APPEALS COMMITTED GRAVE ABUSE OF
DISCRETION IN FINDING THAT RESPONDENTS ARE NOT GUILTY OF
TRADEMARK INFRINGEMENT IN THE CASE WHERE THE SOLE TRIABLE ISSUE
IS THE EXISTENCE OF PROBABLE CAUSE TO ISSUE A SEARCH WARRANT.10
In the meantime, petitioner-intervenor filed a Petition-in-Intervention11 with this Court claiming
to be the sole licensed distributor of Skechers products here in the Philippines.
On November 30, 2006, this Court rendered a Decision 12 dismissing the petition.
Both petitioner and petitioner-intervenor filed separate motions for reconsideration.
In petitioner’s motion for reconsideration, petitioner moved for a reconsideration of the earlier
decision on the following grounds:
(a) THIS HONORABLE COURT MUST RE-EXAMINE THE FACTS OF THIS CASE DUE TO
THE SIGNIFICANCE AND REPERCUSSIONS OF ITS DECISION.
(b) COMMERCIAL QUANTITIES OF THE SEIZED ITEMS WITH THE UNAUTHORIZED
REPRODUCTIONS OF THE "S" TRADEMARK OWNED BY PETITIONER WERE INTENDED
FOR DISTRIBUTION IN THE PHILIPPINE MARKET TO THE DETRIMENT OF PETITIONER –
RETURNING THE GOODS TO RESPONDENTS WILL ADVERSELY AFFECT THE
GOODWILL AND REPUTATION OF PETITIONER.
(c) THE SEARCH WARRANT COURT AND THE COURT OF APPEALS BOTH ACTED WITH
GRAVE ABUSE OF DISCRETION.
(d) THE SEARCH WARRANT COURT DID NOT PROPERLY RE-EVALUATE THE EVIDENCE
PRESENTED DURING THE SEARCH WARRANT APPLICATION PROCEEDINGS.
(e) THE SOLID TRIANGLE CASE IS NOT APPLICABLE IN THIS CASE, AS IT IS BASED ON A
DIFFERENT FACTUAL MILIEU. PRELIMINARY FINDING OF GUILT (OR ABSENCE
THEREOF) MADE BY THE SEARCH WARRANT COURT AND THE COURT OF APPEALS
WAS IMPROPER.
(f) THE SEARCH WARRANT COURT OVERSTEPPED ITS DISCRETION. THE LAW IS
CLEAR. THE DOMINANCY TEST SHOULD BE USED.
(g) THE COURT OF APPEALS COMMITTED ERRORS OF JURISDICTION.13
On the other hand, petitioner-intervenor’s motion for reconsideration raises the following errors for this
Court’s consideration, to wit:
(a) THE COURT OF APPEALS AND THE SEARCH WARRANT COURT ACTED CONTRARY
TO LAW AND JURISPRUDENCE IN ADOPTING THE ALREADY-REJECTED HOLISTIC TEST
IN DETERMINING THE ISSUE OF CONFUSING SIMILARITY;
(b) THE COURT OF APPEALS AND THE SEARCH WARRANT COURT ACTED CONTRARY
TO LAW IN HOLDING THAT THERE IS NO PROBABLE CAUSE FOR TRADEMARK
INFRINGEMENT; AND
(c) THE COURT OF APPEALS SANCTIONED THE TRIAL COURT’S DEPARTURE FROM THE
USUAL AND ACCEPTED COURSE OF JUDICIAL PROCEEDINGS WHEN IT UPHELD THE
QUASHAL OF THE SEARCH WARRANT ON THE BASIS SOLELY OF A FINDING THAT
THERE IS NO CONFUSING SIMILARITY.14
A perusal of the motions submitted by petitioner and petitioner-intervenor would
show that the primary issue posed by them dwells on the issue of whether or not
respondent is guilty of trademark infringement.
After a thorough review of the arguments raised herein, this Court reconsiders its
earlier decision.
The basic law on trademark, infringement, and unfair competition is Republic Act
(R.A.) No. 8293. Specifically, Section 155 of R.A. No. 8293 states:
Remedies; Infringement. — Any person who shall, without the consent of the
owner of the registered mark:
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; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake,
or to deceive, shall be liable in a civil action for infringement by the registrant for
the remedies hereinafter set forth: Provided, That the infringement takes place at
the moment any of the acts stated in Subsection 155.1 or this subsection are
committed regardless of whether there is actual sale of goods or services using
the infringing material.15
The essential element of infringement under R.A. No. 8293 is that the infringing
mark is likely to cause confusion. In determining similarity and likelihood of
confusion, jurisprudence has developed tests the Dominancy Test and the
Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public.
Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more consideration
are the aural and visual impressions created by the marks on the buyers of
goods, giving little weight to factors like prices, quality, sales outlets, and market
segments.16
In contrast, the Holistic or Totality Test necessitates a consideration of the
entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity. The discerning eye of the
observer must focus not only on the predominant words, but also on the other
features appearing on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other.17
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.18
Applying the Dominancy Test to the case at bar, this Court finds that the use of
the stylized "S" by respondent in its Strong rubber shoes infringes on the mark
already registered by petitioner with the IPO. While it is undisputed that
petitioner’s stylized "S" is within an oval design, to this Court’s mind, the
dominant feature of the trademark is the stylized "S," as it is precisely the stylized
"S" which catches the eye of the purchaser. Thus, even if respondent did not use
an oval design, the mere fact that it used the same stylized "S", the same being
the dominant feature of petitioner’s trademark, already constitutes infringement
under the Dominancy Test.
This Court cannot agree with the observation of the CA that the use of the letter
"S" could hardly be considered as highly identifiable to the products of petitioner
alone. The CA even supported its conclusion by stating that the letter "S" has
been used in so many existing trademarks, the most popular of which is the
trademark "S" enclosed by an inverted triangle, which the CA says is identifiable
to Superman. Such reasoning, however, misses the entire point, which is that
respondent had used a stylized "S," which is the same stylized "S" which
petitioner has a registered trademark for. The letter "S" used in the Superman
logo, on the other hand, has a block-like tip on the upper portion and a round
elongated tip on the lower portion. Accordingly, the comparison made by the CA
of the letter "S" used in the Superman trademark with petitioner’s stylized "S" is
not appropriate to the case at bar.
Furthermore, respondent did not simply use the letter "S," but it appears to this
Court that based on the font and the size of the lettering, the stylized "S" utilized
by respondent is the very same stylized "S" used by petitioner; a stylized "S"
which is unique and distinguishes petitioner’s trademark. Indubitably, the
likelihood of confusion is present as purchasers will associate the respondent’s
use of the stylized "S" as having been authorized by petitioner or that
respondent’s product is connected with petitioner’s business.
Both the RTC and the CA applied the Holistic Test in ruling that respondent had
not infringed petitioner’s trademark. For its part, the RTC noted the following
supposed dissimilarities between the shoes, to wit:
1. The mark "S" found in Strong Shoes is not enclosed in an "oval
design."
2. The word "Strong" is conspicuously placed at the backside and
insoles.
3. The hang tags and labels attached to the shoes bears the word
"Strong" for respondent and "Skechers U.S.A." for private complainant;
4. Strong shoes are modestly priced compared to the costs of Skechers
Shoes.19
While there may be dissimilarities between the appearances of the shoes, to this
Court’s mind such dissimilarities do not outweigh the stark and blatant similarities
in their general features. As can be readily observed by simply comparing
petitioner’s Energy20 model and respondent’s Strong21 rubber shoes, respondent
also used the color scheme of blue, white and gray utilized by petitioner. Even
the design and "wavelike" pattern of the midsole and outer sole of respondent’s
shoes are very similar to petitioner’s shoes, if not exact patterns thereof. At the
side of the midsole near the heel of both shoes are two elongated designs in
practically the same location. Even the outer soles of both shoes have the same
number of ridges, five at the back and six in front. On the side of respondent’s
shoes, near the upper part, appears the stylized "S," placed in the exact location
as that of the stylized "S" on petitioner’s shoes. On top of the "tongue" of both
shoes appears the stylized "S" in practically the same location and size.
Moreover, at the back of petitioner’s shoes, near the heel counter, appears
"Skechers Sport Trail" written in white lettering. However, on respondent’s shoes
appears "Strong Sport Trail" noticeably written in the same white lettering, font
size, direction and orientation as that of petitioner’s shoes. On top of the heel
collar of petitioner’s shoes are two grayish-white semi-transparent circles. Not
surprisingly, respondent’s shoes also have two grayish-white semi-transparent
circles in the exact same location. lihpwa1
Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in
applying the holistic test, ruled that there was no colorable imitation, when it
cannot be any more clear and apparent to this Court that there is colorable
imitation. The dissimilarities between the shoes are too trifling and frivolous that it
is indubitable that respondent’s products will cause confusion and mistake in the
eyes of the public. Respondent’s shoes may not be an exact replica of
petitioner’s shoes, but the features and overall design are so similar and alike
that confusion is highly likely.
1avvphi 1
In Converse Rubber Corporation v. Jacinto Rubber & Plastic Co., Inc.,22 this
Court, in a case for unfair competition, had opined that even if not all the details
are identical, as long as the general appearance of the two products are such
that any ordinary purchaser would be deceived, the imitator should be liable, to
wit:
From said examination, We find the shoes manufactured by defendants to
contain, as found by the trial court, practically all the features of those of the
plaintiff Converse Rubber Corporation and manufactured, sold or marketed by
plaintiff Edwardson Manufacturing Corporation, except for their respective
brands, of course. We fully agree with the trial court that "the respective designs,
shapes, the colors of the ankle patches, the bands, the toe patch and the soles of
the two products are exactly the same ... (such that) at a distance of a few
meters, it is impossible to distinguish "Custombuilt" from "Chuck Taylor." These
elements are more than sufficient to serve as basis for a charge of unfair
competition. Even if not all the details just mentioned were identical, with the
general appearances alone of the two products, any ordinary, or even perhaps
even a not too perceptive and discriminating customer could be deceived, and,
therefore, Custombuilt could easily be passed off for Chuck Taylor.
Jurisprudence supports the view that under such circumstances, the imitator
must be held liable. x x x23
Neither can the difference in price be a complete defense in trademark
infringement. In McDonald’s Corporation v. L.C. Big Mak Burger. Inc.,24 this Court
held:
Modern law recognizes that the protection to which the owner of a trademark is
entitled is not limited to guarding his goods or business from actual market
competition with identical or similar products of the parties, but extends to all
cases in which the use by a junior appropriator of a trade-mark or trade-name is
likely to lead to a confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his business into the
field (see 148 ALR 56 et seq; 53 Am. Jur. 576) or is in any way connected with
the activities of the infringer; or when it forestalls the normal potential expansion
of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577). x x x25
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.26 The purchasing public might be mistaken in thinking that petitioner had
ventured into a lower market segment such that it is not inconceivable for the
public to think that Strong or Strong Sport Trail might be associated or connected
with petitioner’s brand, which scenario is plausible especially since both
petitioner and respondent manufacture rubber shoes.
Withal, the protection of trademarks as intellectual property is intended not only
to preserve the goodwill and reputation of the business established on the goods
bearing the mark through actual use over a period of time, but also to safeguard
the public as consumers against confusion on these goods.27 While respondent’s
shoes contain some dissimilarities with petitioner’s shoes, this Court cannot close
1
Rollo, pp. 1046-1071 & 1078-1118.

its eye to the fact that for all intents and purpose, respondent had deliberately 2
An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for Its Powers and
attempted to copy petitioner’s mark and overall design and features of the shoes. Functions, and for Other Purposes. Took effect on January 1, 1998.

Let it be remembered, that defendants in cases of infringement do not normally

3
Under Registration No. 63364; see rollo, p. 107.
copy but only make colorable changes.28The most successful form of copying is
to employ enough points of similarity to confuse the public, with enough points of 4
Under Registration No. 4-1996-110182; see rollo, p. 109.
difference to confuse the courts.29
5
Search Warrant Nos. 02-2827 and 02-2828; see rollo, pp. 144-146, 147-148.

WHEREFORE, premises considered, the Motion for Reconsideration is

6 7
Rollo, pp. 173-176. Id. at 195-220. 8 Id. at 72-83. 9 Id. at 11-59.
GRANTED. The Decision dated November 30, 2006 is RECONSIDERED and
SET ASIDE. 10 11
Id. at 26-27. Id. at 557-603.

SO ORDERED. 12
Penned by Associate Justice Minita V. Chico-Nazario, with Chief Justice Artemio V. Panganiban and Associate Justices
Consuelo Ynares-Santiago, Ma. Alicia Austria-Martinez and Romeo J. Callejo, Sr. concurring; id. at 1032-1045.
DIOSDADO M. PERALTA
Associate Justice
13 14
WE CONCUR: Rollo, p. 1079. Id. at 1047-1048. 15 Emphasis supplied.

ANTONIO T. CARPIO
16
Associate Justice Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25, 2009, 605 SCRA 523,
531; McDonald’s Corporation v. MacJoy Fastfood Corporation, G.R. No. 166115, February 2, 2007, 514 SCRA 95, 106;
Chairperson McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 (2004).
ANTONIO EDUARDO B. NACHURA ROBERTO A. ABAD
Associate Justice Associate Justice 17
Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493 SCRA 333, 357.
JOSE CATRAL MENDOZA
Associate Justice 18
McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra note 16, at 428, citing Sterling Products International, Incorporated
ATTESTATION v. Farbenfabriken Bayer Aktiengesellschaft, et al., 137 Phil. 838, 852 (1969).

19 20
Rollo, p. 174. See rollo, pp. 498-500, 572-574.
I attest that the conclusions in the above Resolution had been reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.
21 22
Id. 186 Phil. 85 (1980).

ANTONIO T. CARPIO 23 24 25
Id. at 94-95. Supra note 16. Id. at 432.
Associate Justice
Second Division, Chairperson
26
Dermaline, Inc v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, 2010.

CERTIFICATION 27
Berris Agricultural Co., Inc., v. Norvy Abyadang, G.R. No. 183404, October 13, 2010.

Pursuant to Section 13, Article VIII of the Constitution and the Division Chairperson’s Attestation, I certify that the conclusions in the above 28
Del Monte Corporation v. Court of Appeals, 260 Phil. 435, 443 (1990).
Resolution had been reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division.

RENATO C. CORONA
Chief Justice

Footnotes
G.R. No. 190065 August 16, 2010
DERMALINE, INC., Petitioner,
vs.
MYRA PHARMACEUTICALS, INC. Respondent.
DECISION
NACHURA, J.:
This is a petition for review on certiorari1 seeking to reverse and set aside the
Decision dated August 7, 20092 and the Resolution dated October 28, 20093 of
the Court of Appeals (CA) in CA-G.R. SP No. 108627.
The antecedent facts and proceedings—
On October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed before the
Intellectual Property Office (IPO) an application for registration of the trademark
"DERMALINE DERMALINE, INC." (Application No. 4-2006011536). The
application was published for Opposition in the IPO E-Gazette on March 9, 2007.
On May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a Verified
Opposition4 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. Myra said that the registration of
Dermaline’s trademark will violate Section 1235 of Republic Act (R.A.) No. 8293
(Intellectual Property Code of the Philippines). 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," registered with the IPO way back July
8, 1986, renewed for ten (10) years on July 8, 2006. Myra has been extensively
using "DERMALIN" commercially since October 31, 1977, and said mark is still
valid and subsisting.
Myra claimed 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 also pointed out that Dermaline applied for the same mark "DERMALINE"
on June 3, 2003 and was already refused registration by the IPO. By filing this
new application for registration, Dermaline appears to have engaged in a fishing
expedition for the approval of its mark. Myra argued that its intellectual property
right over its trademark is protected under Section 1476 of R.A. No. 8293.
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
447 for various skin treatments, it could still be connected to the "DERMALIN"
mark under Classification 58 for pharmaceutical products, since ultimately these
goods are very closely related.
In its Verified Answer,9 Dermaline countered that a simple comparison of the
trademark "DERMALINE DERMALINE, INC." vis-à-vis Myra’s "DERMALIN"
trademark would show that they have entirely different features and distinctive
presentation, thus it cannot result in confusion, mistake or deception on the part
of the purchasing public. Dermaline contended that, in determining if the subject
trademarks are confusingly similar, a comparison of the words is not the only
determinant, but their entirety must be considered in relation to the goods to
which they are attached, including the other features appearing in both labels. It
claimed that there were glaring and striking dissimilarities between the two
trademarks, such that its trademark "DERMALINE DERMALINE, INC." speaks
for itself (Res ipsa loquitur). Dermaline further argued that there could not be any
relation between its trademark for health and beauty services from Myra’s
trademark classified under medicinal goods against skin disorders.
The parties failed to settle amicably. Consequently, the preliminary conference
was terminated and they were directed to file their respective position papers.10
On April 10, 2008, the IPO-Bureau of Legal Affairs rendered Decision No. 2008-
7011 sustaining Myra’s opposition pursuant to Section 123.1(d) of R.A. No. 8293.
It disposed—
WHEREFORE, the Verified Opposition is, as it is, hereby SUSTAINED.
Consequently, Application Serial No. 4-2006-011536 for the mark ‘DERMALINE,
DERMALINE, INC. Stylized Wordmark’ for Dermaline, Inc. under class 44
covering the aforementioned goods filed on 21 October 2006, is as it is hereby,
REJECTED.
Let the file wrapper of ‘DERMALINE, DERMALINE, INC. Stylized Wordmark’
subject matter of this case be forwarded to the Bureau of Trademarks (BOT) for
appropriate action in accordance with this Decision.
SO ORDERED.12
Aggrieved, Dermaline filed a motion for reconsideration, but it was denied under
Resolution No. 2009-12(D)13 dated January 16, 2009.
Expectedly, Dermaline appealed to the Office of the Director General of the IPO.
However, in an Order14 dated April 17, 2009, the appeal was dismissed for being
filed out of time.
Undaunted, Dermaline appealed to the CA, but it affirmed and upheld the Order
dated April 17, 2009 and the rejection of Dermaline’s application for registration
of trademark. The CA likewise denied Dermaline’s motion for reconsideration;
hence, this petition raising the issue of whether the CA erred in upholding the
IPO’s rejection of Dermaline’s application for registration of trademark.
The petition is without merit.
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.15 Inarguably, it is an intellectual property deserving protection by law.
In trademark controversies, each case must be scrutinized according to its
peculiar circumstances, such that jurisprudential precedents should only be
made to apply if they are specifically in point.16
As Myra correctly posits, as a registered trademark owner, it 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.17 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.18 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.19 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.20
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.21
In rejecting the application of Dermaline for the registration of its mark
"DERMALINE DERMALINE, INC.," the IPO applied the Dominancy Test. It
declared that both confusion of goods and service and confusion of business or
of origin were apparent in both trademarks. It also noted that, per Bureau
Decision No. 2007-179 dated December 4, 2007, it already sustained the
opposition of Myra involving the trademark "DERMALINE" of Dermaline under
Classification 5. The IPO also upheld Myra’s right under Section 138 of R.A. No.
8293, which provides that a certification of registration of a mark is prima facie
evidence of the validity of the registration, the registrant’s ownership of the mark,
and of the registrant’s exclusive right to use the same in connection with the
goods and those that are related thereto specified in the certificate.
We agree with the findings of the IPO. As correctly applied by the IPO in this
case, 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.22
Dermaline’s insistence that its applied trademark "DERMALINE DERMALINE,
INC." had differences "too striking to be mistaken" from Myra’s "DERMALIN"
cannot, therefore, be sustained. 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.
Further, 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.
1avv phi 1
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, we have held –
Modern law recognizes that the protection to which the owner of a trademark is
entitled is not limited to guarding his goods or business from actual market
competition with identical or similar products of the parties, but extends to all
cases in which the use by a junior appropriator of a trade-mark or trade-name is
likely to lead to a confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his business into the
field (see 148 ALR 56 et seq; 53 Am Jur. 576) or is in any way connected with
the activities of the infringer; or when it forestalls the normal potential expansion
of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577).23 (Emphasis supplied)
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 JOSE CATRAL MENDOZA
Associate Justice
pharmaceutical topical applications for the skin to health and beauty services.
ATTESTATION
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 I attest that the conclusions in the above Resolution were reached in consultation before the case was
by another, the application should be rejected and dismissed outright, even assigned to the writer of the opinion of the Court’s Division.
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 ANTONIO T. CARPIO
part of the public, but also to protect an already used and registered trademark Associate Justice
Chairperson, Second Division
and an established goodwill.24
CERTIFICATION
Besides, the issue on protection of intellectual property, such as trademarks, is
factual in nature. The findings of the IPO, upheld on appeal by the same office, Pursuant to Section 13, Article VIII of the Constitution and the Division Chairperson's Attestation, I certify
and further sustained by the CA, bear great weight and deserves respect from that the conclusions in the above Resolution had been reached in consultation before the case was
this Court. Moreover, the decision of the IPO had already attained finality when assigned to the writer of the opinion of the Court’s Division.
Dermaline failed to timely file its appeal with the IPO Office of the Director
General. RENATO C. CORONA
Chief Justice
WHEREFORE, the petition is DENIED. The Decision dated August 7, 2009 and
the Resolution dated October 28, 2009 of the Court of Appeals in CA-G.R. SP Footnotes
No. 108627 are AFFIRMED. Costs against petitioner.
1 Rollo, pp. 3-18.
SO ORDERED.
2Penned by Associate Justice Martin S. Villarama, Jr. (now a member of this
Court), with Associate Justices Vicente S.E. Veloso and Normandie B.
ANTONIO EDUARDO B. NACHURA
Pizarro, concurring; id. at 19-32.
Associate Justice
3 Id. at 32.
WE CONCUR:
4 Id. at 78-86.
ANTONIO T. CARPIO
Associate Justice 5 SEC. 123. Registrability. – 123.1. A mark cannot be registered if it:
Chairperson
xxx
DIOSDADO M. PERALTA ROBERTO A. ABAD
Associate Justice Associate Justice (d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in respect of:
 (i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or
cause confusion;
x x x (Emphasis supplied.)
6 SEC. 147. Rights Conferred. — 147.1. The owner of a registered mark shall
have the exclusive right to prevent all third parties not having the owner’s
consent from using in the course of trade identical or similar signs or
containers for goods or services which are identical or similar to those in
respect of which the trademark is registered where such use would result in a
likelihood of confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known mark defined
in Subsection 123.1(e) which is registered in the Philippines, shall
extend to goods and services which are not similar to those in
respect of which the mark is registered: Provided, That use of that
mark in relation to those goods or services would indicate a
connection between those goods or services would indicate a
connection between those goods or services and the owner of the
registered mark: Provided further, That the interests of the owner of
the registered mark are likely to be damaged by such use.
7"FACIAL, BACK CLEANING, ACNE TREATMENT AND CONTROL SKIN
PEELING (FACE BODY, ARMPIT, ARMS AND LEGS), SLIMMING, HAIR
GROWER TREATMENT, SKIN BLEACHING (FACE, BODY, ARMPIT,
BODY & LEGS), DERMALIFT (FACE LIFTING, BODY TONING, EYEBAG
REMOVAL), EXCESSIVE SWEATING, BODY ODOR TREATMENT AND
CONTROL, OPEN PORES TREATMENT, STRETCH MARK TREATMENT,
BODY MASSAGE, EYELASH PERMING, TATTOO (EYEBROW, UPPER
AND LOWER LID, LIP), WOMEN’S HAIRCUT, MEN’S HAIRCUT, KID’S
HAIRCUT, BLOW-DRY SETTING, UP-STYLE (LADIES), PERMING, TINT
(TOUCH UP), HIGHLIGHTS (CAP), HIGHLIGHTS (FOIL), CELLOPHANE,
HAIR COLOR, HAIR RELAXING, HAIR TREATMENT/SPA, HOT OIL, FULL
MAKE-UP, EYE MAKE-UP, FOOT SPA WITH PEDICURE, FOOT SCRUB,
MANICURE, EYEBROW THREADING, UPPER LIP THREADING, FULL
BODY MASSAGE, HALF BODY MASSAGE, SAUNA."
8"TOPICAL ANTIBACTERIAL, ANTIFUNGAL, ANTISCABIES
PREPARATIONS FOR THE TREATMENT OF SKIN DISORDERS."
9Rollo, pp. 87-93. 10 Position Paper (For the Opposer), rollo, pp. 94-106;
Position Paper for Dermaline, pp. 107-119.
11 Id. at 37-50. 12 Id. at.26.13 Id. at 52-53. 14 Id. at 34-35.
15Prosource International, Inc. v. Horphag Research Management SA, G.R.
No. 180073, November 25, 2009, 605 SCRA 523, 528; McDonald’s
Corporation v. MacJoy Fastfood Corporation, G.R. No. 166115, February 2,
2007, 514 SCRA 95, 107.
16
Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493
SCRA 333, 356.
17
Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., 406 Phil. 905, 918 (2001).
18
Philip Morris, Inc. v. Fortune Tobacco Corporation, supra at 359, citing Dy Buncio v. Tan Tiao
Bok, 42 Phil 190, 196-197 (1921).
19
McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 (2004).
20
Mighty Corporation v. E. & J. Gallo Winery, 478 Phil. 615, 659 (2004).
21
McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 428, citing Sterling Products
International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, et al., 137 Phil 838, 852
(1969).
22
Rollo, p. 47.
23
McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 432, citing Sta. Ana v. Maliwat,
et al., 133 Phil. 1006, 1013 (1968).
24
McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 406, citing Faberge
Incorporated v. Intermediate Appellate Court, G.R. No. 71189, November 4, 1992, 215 SCRA
316, 320 and Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapania, 108 Phil. 833,
836.
G.R. No. 139300 March 14, 2001
original Decision, as follows:
AMIGO MANUFACTURING, INC., petitioner,
vs.
CLUETT PEABODY CO., INC., respondent.
PANGANIBAN, J.:
The findings of the Bureau of Patents that two trademarks are confusingly and
deceptively similar to each other are binding upon the courts, absent any
sufficient evidence to the contrary. In the present case, the Bureau considered
the totality of the similarities between the two sets of marks and found that they
were of such degree, number and quality as to give the overall impression that
the two products are confusingly if not deceptively the same.
Statement of the Case
Petitioner Amigo Manufacturing Inc. challenges, under Rule 45 of the Rules of
Court, the January 14, 1999 Resolution1 of the Court of Appeals (CA) in CA-GR
SP No. 22792, which reversed, on reconsideration, its own September 29, 1998
Decision.2 The dispositive portion of the assailed Resolution reads as follows:
"WHEREFORE, the Motion for Reconsideration is GRANTED, and the Decision dated
September 29, 1998 REVERSED. Consequently, the decision rendered by the Director of
Patents dated September 3, 1990 is hereby AFFIRMED."
The Decision of the Director of Patents, referred to by the CA, disposed as follows:
"WHEREFORE, the Petition is GRANTED. Consequently, Certificate of Registration No. SR-
2206 issued to Respondent-Registrant [herein petitioner] is hereby cancelled.
"Let the records of this case be remanded to the Patent/Trademark Registry and EDP Division
for appropriate action in accordance with this Decision."
Petitioner also seeks the reversal of the June 30, 1999 CA Resolution3 denying
its own Motion for Reconsideration.
The Facts
The facts, which are undisputed, are summarized by the Court of Appeals in its
"The source of the controversy that precipitated the filing by [herein
Respondent] Cluett Peabody Co., Inc. (a New York corporation) of the
present case against [herein Petitioner] Amigo Manufacturing Inc. (a
Philippine corporation) for cancellation of trademark is [respondent's]
claim of exclusive ownership (as successor in interest of Great American
Knitting Mills, Inc.) of the following trademark and devices, as used on
men's socks:
a) GOLD TOE, under Certificate of Registration No. 6797 dated September 22, 1958;
b) DEVICE, representation of a sock and magnifying glass on the toe of a sock, under
Certificate of Registration No. 13465 dated January 25, 1968;
c) DEVICE, consisting of a 'plurality of gold colored lines arranged in parallel relation
within a triangular area of toe of the stocking and spread from each other by lines of
contrasting color of the major part of the stocking' under Certificate of Registration No.
13887 dated May 9, 1968; and
d) LINENIZED, under Certificate of Registration No. 15440 dated April 13, 1970.
On the other hand, [petitioner's] trademark and device 'GOLD TOP,
Linenized for Extra Wear' has the dominant color 'white' at the center and
a 'blackish brown' background with a magnified design of the sock's
garter, and is labeled 'Amigo Manufacturing Inc., Mandaluyong, Metro
Manila, Made in the Philippines'.
In the Patent Office, this case was heard by no less than six Hearing
Officers: Attys. Rodolfo Gilbang, Rustico Casia, M. Yadao, Fabian Rufina,
Neptali Bulilan and Pausi Sapak. The last named officer drafted the
decision under appeal which was in due court signed and issued by the
Director of Patents (who never presided over any hearing) adversely
against the respondent Amigo Manufacturing, Inc. as heretofore
mentioned (supra, p.1).
 The decision pivots on two point: the application of the rule of idem
sonans and the existence of a confusing similarity in appearance
between two trademarks (Rollo, p. 33)."4
Ruling of the Court of Appeals
In its assailed Resolution, the CA held as follows:
"After a careful consideration of [respondent's] arguments and a re-
appreciation of the records of this case. [w]e find [respondent's] motion
for reconsideration meritorious. As shown by the records, and as
correctly held by the Director of Patents, there is hardly any variance in
the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both
show a representation of a man's foot wearing a sock, and the marks are
printed in identical lettering. Section 4(d) of R.A. No. 166 declares to be
unregistrable, 'a mark which consists o[r] comprises a mark or trademark
which so resembles a mark or tradename registered in the Philippines of
tradename previously used 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 the purchasers. [Petitioner]'s mark is a combination
of the different registered marks owned by [respondent]. As held in Del
Monte Corporation v. Court of Appeals, 181 SCRA 410 (1990), the
question is not whether the two articles are distinguishable by their label
when set aside but whether the general confusion made by the article
upon the eye of the casual purchaser who is unsuspicious and off his
guard, is such as to likely result in confounding it with the original. As
held by the Court in the same decision[,] 'The most successful form of
copying is to employ enough points of similarity to confuse the public with
enough points of difference to confuse the courts.' Furthermore,
[petitioner]'s mark is only registered with the Supplemental Registry
which gives no right of exclusivity to the owner and cannot overturn the
presumption of validity and exclusiv[ity] given to a registered mark.
"Finally, the Philippines and the United States are parties to the
Union Convention for the Protection of Industrial Property
adopted in Paris on March 20, 1883, otherwise known as the
Paris Convention. (Puma Sportschuhfabriken Rudolf Dassler K.G.
v. Intermediate Appellate Court, 158 SCRA 233). [Respondent] is
domiciled in the United States of America and is the lawful owner
of several trademark registrations in the United States for the
mark 'GOLD TOE'.
xxx xxx x x x'
By virtue of the Philippines' membership to the Paris Union, trademark
rights in favor of the [respondent] were created. The object of the
Convention is to accord a national of a member nation extensive
protection against infringement and other types of unfair competition.
(Puma Sportschuhfabriken Rudolf Dassler K.G. v. Intermediate Appellate
Court, 158 SCRA 233; La Chemise Lacoste, S.A. v. Fernandez, 129
SCRA 373)"5
Hence, this Petition.6
Issues
In its Memorandum,7 petitioner raises the following issues for the consideration of
this Court:
"I
Whether or not the Court of Appeals overlooked that petitioner's
trademark was used in commerce in the Philippines earlier than
respondent's actual use of its trademarks, hence the Court of Appeals
erred in affirming the Decision of the Director of Patents dated
September 3, 1990.
II
Since the petitioner's actual use of its trademark was ahead of the
respondent, whether or not the Court of Appeals erred in canceling the
registration of petitioner's trademark instead of canceling the trademark
of the respondent.
 III
Whether or not the Court of Appeals erred in affirming the findings of the
Director of Patents that petitioner's trademark [was] confusingly similar to
respondent's trademarks.
IV
Whether or not the Court of Appeals erred in applying the Paris
Convention in holding that respondent ha[d] an exclusive right to the
trademark 'gold toe' without taking into consideration the absence of
actual use in the Philippines."8
In the main, the Court will resolve three issues: (1) the date of actual use of the
two trademarks; (2) their confusing similarities, and (3) the applicability of the
Paris Convention.
The Court's Ruling
The Petition has no merit.
First Issue:
Dates of First Use of Trademark and Devices
Petitioner claims that it started the actual use of the trademark "Gold Top and
Device" in September 1956, while respondent began using the trademark "Gold
Toe" only on May 15, 1962. It contends that the claim of respondent that it had
been using the "Gold Toe" trademark at an earlier date was not substantiated.
The latter's witnesses supposedly contradicted themselves as to the date of first
actual use of their trademark, coming up with different dates such as 1952, 1947
and 1938.
We do not agree. Based on the evidence presented, this Court concurs in the
findings of the Bureau of Patents that respondent had actually used the
trademark and the devices in question prior to petitioner's use of its own. During
the hearing at the Bureau of Patents, respondent presented Bureau registrations
indicating the dates of first use in the Philippines of the trademark and the
devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the
Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the Gold
Toe Representation; and d) February 28, 1952, "Linenized."
The registration of the above marks in favor of respondent constitutes prima facie
evidence, which petitioner failed to overturn satisfactorily, of respondent's
ownership of those marks, the dates of appropriation and the validity of other
pertinent facts stated therein. Indeed, Section 20 of Republic Act 166 provides as
follows:
"Sec. 20. Certificate of registration prima facie evidence of validity. - A
certificate of registration of a mark or trade-name shall be prima facie
evidence of the validity of the registration, the registrant's ownership of
the mark or trade-name, and of the registrant's exclusive right to use the
same in connection with the goods, business or services specified in the
certificate, subject to any conditions and limitations stated therein."9
Moreover, the validity of the Certificates of Registration was not questioned.
Neither did petitioner present any evidence to indicate that they were fraudulently
issued. Consequently, the claimed dates of respondent's first use of the marks
are presumed valid. Clearly, they were ahead of petitioner's claimed date of first
use of "Gold Top and Device" in 1958.
Section 5-A of Republic Act No. 16610 states that an applicant for a trademark or
trade name shall, among others, state the date of first use. The fact that the
marks were indeed registered by respondent shows that it did use them on the
date indicated in the Certificate of Registration.
On the other hand, petitioner failed to present proof of the date of alleged first
use of the trademark "Gold Top and Device". Thus, even assuming that
respondent started using it only on May 15, 1962, we can make no finding that
petitioner had started using it ahead of respondent.
Furthermore, petitioner registered its trademark only with the supplemental
register. In La Chemise Lacoste v. Fernandez,11 the Court held that registration
with the supplemental register gives no presumption of ownership of the
trademark. Said the Court:
 "The registration of a mark upon the supplemental register is not, as in
the case of the principal register, prima facie evidence of (1) the validity
of registration; (2) registrant's ownership of the mark; and (3) registrant's
exclusive right to use the mark. It is not subject to opposition, although it
may be cancelled after its issuance. Neither may it be the subject of
interference proceedings. Registration [i]n the supplemental register is
not constructive notice of registrant's claim of ownership. A supplemental
register is provided for the registration because of some defects
(conversely, defects which make a mark unregistrable on the principal
register, yet do not bar them from the supplemental register.)' (Agbayani,
II Commercial Laws of the Philippines, 1978, p. 514, citing Uy Hong Mo v.
Titay & Co., et al., Dec. No. 254 of Director of Patents, Apr. 30, 1968."
As to the actual date of first use by respondent of the four marks it registered, the
seeming confusion may have stemmed from the fact that the marks have
different dates of first use. Clearly, however, these dates are indicated in the
Certificates of Registration.
In any case, absent any clear showing to the contrary, this Court accepts the
finding of the Bureau of Patents that it was respondent which had prior use of its
trademark, as shown in the various Certificates of Registration issued in its favor.
Verily, administrative agencies' findings of fact in matters falling under their
jurisdiction are generally accorded great respect, if not finality. Thus, the Court
has held:
"x x x. By reason of the special knowledge and expertise of said
administrative agencies over matters falling under their jurisdiction, they
are in a better position to pass judgment thereon; thus, their findings of
fact in that regard are generally accorded great respect, if not finality, by
the courts. The findings of fact of an administrative agency must be
respected as long as they are supported by substantial evidence, even if
such evidence might not be overwhelming or even preponderant. It is not
the task of an appellate court to weigh once more the evidence submitted
before the administrative body and to substitute its own judgment for that
of the administrative agency in respect of sufficiency of evidence."12
Second Issue:
Similarity of Trademarks
Citing various differences between the two sets of marks, petitioner assails the
finding of the director of patents that its trademark is confusingly similar to that of
respondent. Petitioner points out that the director of patents erred in its
application of the idem sonans rule, claiming that the two trademarks "Gold Toe"
and "Gold Top" do not sound alike and are pronounced differently. It avers that
since the words gold and toe are generic, respondent has no right to their
exclusive use.
The arguments of petitioner are incorrect. True, it would not be guilty of
infringement on the basis alone of the similarity in the sound of petitioner's "Gold
Top" with that of respondent's "Gold Toe." Admittedly, the pronunciations of the
two do not, by themselves, create confusion.
The Bureau of Patents, however, did not rely on the idem sonans test alone in
arriving at its conclusion. This fact is shown in the following portion of its
Decision:
"As shown by the drawings and labels on file, the mark registered by Respondent-Registrant
under Registration No. SR-2206 is a combination of the abovementioned trademarks registered
separately by the petitioner in the Philippines and the United States.
"With respect to the issue of confusing similarity between the marks of the petitioner and that of
the respondent-registrant applying the tests of idem sonans, the mark 'GOLD TOP & DEVICE' is
confusingly similar with the mark 'GOLD TOE'. The difference in sound occurs only in the final
letter at the end of the marks. For the same reason, hardly is there any variance in their
appearance. 'GOLD TOE' and 'GOLD TOP' are printed in identical lettering. Both show [a]
representation of a man's foot wearing a sock. 'GOLD TOP' blatantly incorporates petitioner's
'LINENIZED' which by itself is a registered mark."13
The Bureau considered the drawings and the labels, the appearance of the
labels, the lettering, and the representation of a man's foot wearing a sock.
Obviously, its conclusion is based on the totality of the similarities between the
parties' trademarks and not on their sounds alone.
In Emerald Garment Manufacturing Corporation v. Court of Appeals,14 this Court
stated that in determining whether trademarks are confusingly similar,
jurisprudence has developed two kinds of tests, the Dominancy Test15 and the
Holistic Test.16 In its words:
 "In determining whether colorable imitation exists, jurisprudence has
developed two kinds of tests – the Dominancy Test applied in Asia
Brewery, Inc. v. Court of Appeals and other cases and the Holistic Test
developed in Del Monte Corporation v. Court of Appeals and its
proponent cases.
As its title implies, the test of dominancy focuses on the similarity of the
prevalent features of the competing trademarks which might cause
confusion or deception and thus constitutes infringement.
xxx xxx xxx
. . . . 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. v. 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. (Auburn
Rubber Corporation vs. Hanover Rubber Co., 107 F. 2d 588; x x x.)
xxx xxx xxx
On the other side of the spectrum, the holistic test mandates that the
entirety of the marks in question must be considered in determining
confusing similarity."
In the present case, a resort to either the Dominancy Test or the Holistic Test
shows that colorable imitation exists between respondent's "Gold Toe" and
petitioner's "Gold Top." A glance at petitioner's mark shows that it definitely has a
lot of similarities and in fact looks like a combination of the trademark and
devices that respondent has already registered; namely, "Gold Toe," the
representation of a sock with a magnifying glass, the "Gold Toe" representation
and "linenized."
Admittedly, there are some minor differences between the two sets of marks. The
similarities, however, are of such degree, number and quality that the overall
impression given is that the two brands of socks are deceptively the same, or at
least very similar to each another. An examination of the products in question
shows that their dominant features are gold checkered lines against a
predominantly black background and a representation of a sock with a
magnifying glass. In addition, both products use the same type of lettering. Both
also include a representation of a man's foot wearing a sock and the word
"linenized" with arrows printed on the label. Lastly, the names of the brands are
similar -- "Gold Top" and "Gold Toe." Moreover, it must also be considered that
petitioner and respondent are engaged in the same line of business.
Petitioner cannot therefore ignore the fact that, when compared, most of the
features of its trademark are strikingly similar to those of respondent. In addition,
these representations are at the same location, either in the sock itself or on the
label. Petitioner presents no explanation why it chose those representations,
considering that these were the exact symbols used in respondent's marks.
Thus, the overall impression created is that the two products are deceptively and
confusingly similar to each other. Clearly, petitioner violated the applicable
trademark provisions during that time.
Let it be remembered that duly registered trademarks are protected by law as
intellectual properties and cannot be appropriated by others without violating the
due process clause. An infringement of intellectual rights is no less vicious and
condemnable as theft of material property, whether personal or real.
Third Issue:
The Paris Convention
Petitioner claims that the Court of Appeals erred in applying the Paris
Convention. Although respondent registered its trademark ahead, petitioner
argues that the actual use of the said mark is necessary in order to be entitled to
the protection of the rights acquired through registration.
As already discussed, respondent registered its trademarks under the principal
register, which means that the requirement of prior use had already been fulfilled.
To emphasize, Section 5-A of Republic Act 166 requires the date of first use to

be specified in the application for registration. Since the trademark was
successfully registered, there exists a prima facie presumption of the correctness
of the contents thereof, including the date of first use. Petitioner has failed to
rebut this presumption.
Thus, applicable is the Union Convention for the Protection of Industrial Property
adopted in Paris on March 20, 1883, otherwise known as the Paris Convention,
of which the Philippines and the United States are members. Respondent is
domiciled in the United States and is the registered owner of the "Gold Toe"
trademark. Hence, it is entitled to the protection of the Convention. A foreign-
based trademark owner, whose country of domicile is a party to an international
convention relating to protection of trademarks,17 is accorded protection against
infringement or any unfair competition as provided in Section 37 of Republic Act
166, the Trademark Law which was the law in force at the time this case was
instituted.
In sum, petitioner has failed to show any reversible error on the part of the Court
of Appeals. Hence, its Petition must fail.
WHEREFORE, the Petition is hereby DENIED and the assailed Resolution
AFFIRMED. Costs against petitioner.
SO ORDERED.
Melo, Vitug, Gonzaga-Reyes, and Sandoval-Gutierrez JJ., concur.
Footnotes
1Rollo, pp. 17-22; written by Justice Demetrio G. Demetria, with the concurrence of
Justices Ramon A. Barcelona and Renato C. Dacudao.
2Rollo, pp. 11-15; written by Justice Emeterio C. Cui, with the concurrence of
Justices Ramon A. Barcelona and Demetrio G. Demetria.
3 Rollo, p. 36.
4 CA Decision, pp. 2-3; rollo, pp. 12-13.
5
Assailed Resolution, pp. 4-6; rollo, pp. 20-22.
6
This case was deemed submitted for resolution on April 17, 2000, upon receipt by
this Court of respondent's Memorandum, signed by Attys. Editha R. Hechanova and
Daphne Ruby B. Grasparil. Petitioner's Memorandum, signed by Atty. Arturo S.
Santos, was received by the Court on February 24, 2000.
7 Rollo, pp. 273-298.
8 Petitioner's Memorandum, pp. 4-5; rollo, pp. 276-277.
9This provision is substantially reproduced in Section 138 of RA 8293, otherwise
known as "Intellectual Property Code of the Philippines."
10 "Sec. 5. Requirements of the application. - The application for the registration of a
mark or trade-name shall be in English or Spanish, or in the national language, with
its corresponding English translation, and signed by the applicant, and shall include:
(a) Sworn statement of the applicant's domicile and citizenship, the date of the
applicant's first use of the mark or trade-name, the date of the applicant's first use of
the mark or trade-name in commerce or business, the goods, business or services in
connection with which the mark or trade-name is used and the mode or manner in
which the mark is used in connection with such goods, business or services, and that
the person making the application believes himself, or the firm, corporation or
association on whose behalf he makes the verification, to be the owner of the mark or
trade-name sought to be registered, that the mark or trade-name is in use in
commerce or business, and that to the best of his knowledge, no person, firm,
corporation or association has the right to use such mark or trade-name in commerce
or business either in the identical form thereof or in such near resemblance thereto as
might be calculated to deceive. x x x ."
Under Section 124.2 of RA 8293, the applicant is now required to "file a declaration of
actual use of the mark with evidence to that effect, as prescribed by the Regulations
within three (3) years from the filing date of the application. x x x."
11 129 SCRA 373, 393, May 21, 1984, per Gutierrez, J.
12Villaflor v. CA, 280 SCRA 297, 329-330, October 9, 1997, per Panganiban, J. See
also Bulilan v. Commission on Audit, 300 SCRA 445, December 22,
1998; Government Service Insurance System v. Court of Appeals, 296 SCRA 514,
September 25, 1998; Prime Marine Services, Inc. v. National Labor Relations
Commission, 297 SCRA 394, October 8, 1998.
13 Decision of the Bureau of Patents, p. 3; rollo, p. 85.
14 251 SCRA 600, 615-616, December 29, 1995, per Kapunan, J.
15
See Asia Brewery, Inc. v. Court of Appeals, 224 SCRA 437, July 5, 1993; Converse
Rubber Corporation v. Universal Rubber Products, Inc., 147 SCRA 154, January 8,
1987.
16
See Del Monte Corporation v. Court of Appeals, 181 SCRA 410, January 25,
1990; Fruit of the Loom, Inc. v. Court of Appeals, 133 SCRA 405, November 29,
1984.
17
§37 of RA 166 reads:
"Rights Sec. 37. Rights of foreign registrants. - Persons who are nationals of,
domiciled in, or have a bona fide or effective business or commercial establishment in
any foreign country, which is a party to any international convention or treaty relating
to marks or trade-names, or the repression of unfair competition to which the
Philippines may be a party, shall be entitled to the benefits and subject to the
provisions of this Act to the extent and under the conditions essential to give effect to
any such convention and treaties so long as the Philippines shall continue to be a
party thereto, except as provided in the following paragraphs of this section.
No registration of a mark or trade-name in the Philippines by a person described in
the preceding paragraph of this section shall be granted until such mark or trade-
name has been registered in the country of origin of the applicant, unless the
applicant alleges use in commerce.
For the purposes of this section, the country of origin of the applicant is the country in
which he has bona fide and effective industrial or commercial establishment, or if he
has not such an establishment in the country in which he is domiciled, or if he has not
a domicile in any of the countries described in the first paragraph of this section, the
country of which he is a national.
An application for registration of a mark or trade-name under the provisions of this Act
filed by a person described in the first paragraph of this section who has previously
duly filed an application for registration of the same mark or trade-name in one of the
countries described in said paragraph shall be accorded the same force and effect as
would be accorded to the same application if filed in the Philippines on the same date
on which the application was first filed in such foreign country: Provided, That -
(a) The application in the Philippines is filed within six months from the date on which
the applica[tion] was first filed in the foreign country; and within three months from the
date of filing or within such time as the Director shall in his discretion grant, the
applicant shall furnish a certified copy of the application for or registration in the
country of origin of the applicant, together with a translation thereof into English, if not
in the English language;
(b) The application conforms as nearly as practicable to the requirements of this Act,
but use in commerce need not be alleged:
(c) The rights acquired by third parties before the date of the filing of the first
application in the foreign country shall in no way be affected by a registration obtained
[for] an application filed under this paragraph; and
(d) Nothing in this paragraph shall entitle the owner of a registration granted under
this section to sue for acts committed prior to the date on which his mark or trade-
name was registered in this country unless the registration is based on use in
commerce.
The registration of a mark under the provisions of this section shall be independent of
the registration in the country of origin and the duration, validity or transfer in the
Philippines of such registration shall be governed by the provisions of this Act.
Trade-names of persons described in the first paragraph of this section shall be
protected without the obligation of filing or registration whether or not they form parts
of marks.
Any person designated in the first paragraph of this section as entitled to the benefits
and subject to the provisions of this Act shall be entitled to effective protection against
unfair competition, and the remedies provided herein for infringement of marks and
trade-names shall be available so far as they may be appropriate in repressing acts of
unfair competition.
Citizens or residents of the Philippines shall have the same benefits as are granted by
this section to persons described in the first paragraph hereof."
G.R. No. L-23035 July 31, 1975
PHILIPPINE NUT INDUSTRY, INC., petitioner,
vs.
STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as
Director of Patents, respondents.
Perfecta E. De Vera for petitioner.
Paredes, Poblador, Cruz and Nazareno for private respondent.
Office of the Solicitor General Arturo A. Alafriz, Acting Assistant Solicitor General
Isidro C. Borromeo and Solicitor Francisco J. Bautista for respondent Director.
MUNOZ PALMA, J.:
Challenged in this petition for review is the decision of respondent Director of
Patents which orders the cancellation of Certificate of Registration No. SR-416
issued in favor of herein petitioner Philippine Nut Industry, Inc. (hereinafter called
Philippine Nut) for the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS," upon complaint of Standard Brands Inc. (hereinafter to be called
Standard Brands).
The records of the case show the following incidents:
Philippine Nut, a domestic corporation, obtained from the Patent Office on
August 10, 1961, Certificate of Registration No. SR-416 covering the trademark
"PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its product of
salted peanuts.
On May 14, 1962, Standard Brands a foreign corporation,1 filed with the Director
of Patents Inter Partes Case No. 268 asking for the cancellation of Philippine
Nut's certificate of registration on the ground that "the registrant was not entitled
to register the mark at the time of its application for registration thereof" for the
reason that it (Standard Brands) is the owner of the trademark "PLANTERS
COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172, issued
by the Patent Office on July 28, 1958. Standard Brands alleged in its petition that
Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"
closely resembles and is confusingly similar to its trademark "PLANTERS
COCKTAIL PEANUTS" used also on salted peanuts, and that the registration of
the former is likely to deceive the buying public and cause damage to it.
On June 1, 1962, Philippine Nut filed its answer invoking the special defense that
its registered label is not confusingly similar to that of Standard Brands as the
latter alleges.
At the hearing of October 4, 1962, the parties submitted a partial stipulation of
facts. On December 12, 1962, an amended partial stipulation of facts was
submitted, the pertinent agreements contained in which are: (1) that Standard
Brands is the present owner of the trademark "PLANTERS COCKTAIL
PEANUTS" covered by Certificate of Registration No. SR-172 issued on July 28,
1958; (2) that Standard Brands trademark was first used in commerce in the
Philippines in December, 1938 and (3) that Philippine Nut's trademark
"PHILIPPINE PLANTERS CORDIAL PEANUTS" was first used in the Philippines
on December 20, 1958 and registered with the Patent Office on August 10, 1961.
On December 10, 1963, after the presentation of oral and documentary evidence
and the filing by the parties of their memoranda, respondent Director of Patents
rendered Decision No. 281 giving due course to Standard Brand's petition and
ordering the cancellation of Philippine Nut's Certificate of Registration No. SR-
416. The Director of Patents found and held that in the labels using the two
trademarks in question, the dominant part is the word "Planters", displayed "in a
very similar manner" so much so that "as to appearance and general impression"
there is "a very confusing similarity," and he concluded that Philippine Nut "was
not entitled to register the mark at the time of its filing the application for
registration" as Standard Brands will be damaged by the registration of the same.
Its motion for reconsideration having been denied, Philippine Nut came up to this
Court for a review of said decision.
In seeking a reversal of the decision of respondent Director of Patents, petitioner
brings forth eleven assigned errors all of which revolve around one main issue: is
the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by
Philippine Nut on its label for salted peanuts confusingly similar to the trademark
"PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product so
as to constitute an infringement of the latter's trademark rights and justify its
cancellation?2
The applicable law to the case is found in Republic Act 166 otherwise known as
the Trade-Mark Law from which We quote the following pertinent provisions:
Chapter II-A. —
Sec. 4. Registration of trade-marks, trade-names and service-
marks on the principal register. — There is hereby established a
register of trade-marks, trade-names and service-marks which
shall be known as the principal register. The owner of a trade-
mark, 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 on the principal
register, unless it:
(d) Consists of or comprises a mark or trade-name which so
resembles a mark or trade-name registered in the Philippines or a
mark or trade-name previously used 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; ... (emphasis Ours)
Sec. 17. Grounds for cancellation — Any person, who believes
that he is or will be damaged by the registration of a mark or
trade-name, may, upon the payment of the prescribed fee, apply
to cancel said registration upon any of the following grounds:
(c) That the registration was obtained fraudulently or contrary to
the provisions of section four, Chapter II hereof; ....
Sec. 22. Infringement, what constitutes. — Any person who shall
use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source
or origin of such goods or services, or identity of such business;
or reproduce, counterfeit, copy or colorably imitate any such mark
or trade-name and apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in
connection with such goods, business or services, shall be liable
to a civil action by the registrant for any or all of the remedies
herein provided. (emphasis supplied).
In the cases involving infringement of trademark brought before the Court it has
been consistently held that there is infringement of trademark when the use of
the mark involved would be likely to cause confusion or mistake in the mind of
the public or to deceive purchasers as to the origin or source of the commodity;
that whether or not a trademark causes confusion and is likely to deceive the
public is a question of fact which is to be resolved by applying the "test of
dominancy", meaning, if the competing trademark contains the main or essential
or dominant features of another by reason of which confusion and deception are
likely to result, then infringement takes pIace; that duplication or imitation is not
necessary, a similarity in the dominant features of the trademarks would be
sufficient.3
1. The first argument advanced by petitioner which We believe goes to the core
of the matter in litigation is that the Director of Patents erred in holding that the
dominant portion of the label of Standard Brands in its cans of salted peanuts
consists of the word PLANTERS which has been used in the label of Philippine
Nut for its own product. According to petitioner, PLANTERS cannot be
considered as the dominant feature of the trademarks in question because it is a
mere descriptive term, an ordinary word which is defined in Webster International
Dictionary as "one who or that which plants or sows, a farmer or an agriculturist."
(pp. 10-11, petitioner's brief)
We find the argument without merit. While it is true that PLANTERS is an
ordinary word, nevertheless it is used in the labels not to describe the nature of
the product, but to project the source or origin of the salted peanuts contained in
the cans. The word PLANTERS printed across the upper portion of the label in
bold letters easily attracts and catches the eye of the ordinary consumer and it is
that word and none other that sticks in his mind when he thinks of salted
peanuts.
In cases of this nature there can be no better evidence as to what is the
dominant feature of a label and as to whether there is a confusing similarity in the
contesting trademarks than the labels themselves. A visual and graphic
presentation of the labels will constitute the best argument for one or the other,
hence, we are reproducing hereunder a picture of the cans of salted peanuts of
the parties to the case.
The picture below is part of the documentary evidence appearing in the original
records, and it clearly demonstrates the correctness of the finding of respondent
Director that the word PLANTERS is the dominant, striking mark of the labels in
question.
It is true that there are other words used such as "Cordial" in petitioner's can and
"Cocktail" in Standard Brands', which are also prominently displayed, but these
words are mere adjectives describing the type of peanuts in the labeled
containers and are not sufficient to warn the unwary customer that the two
products come form distinct sources. As a whole it is the word PLANTERS which
draws the attention of the buyer and leads him to conclude that the salted
peanuts contained in the two cans originate from one and the same
manufacturer. In fact, when a housewife sends her housemaid to the market to
buy canned salted peanuts, she will describe the brand she wants by using the
word PLANTERS and not "Cordial" nor "Cocktail".
2. The next argument of petitioner is that respondent Director should not have
based his decision simply on the use of the term PLANTERS, and that what he
should have resolved is whether there is a confusing similarity in the trademarks
of the parties.
It is quite obvious from the record, that respondent Director's decision is based
not only on the fact that petitioner herein adopted the same dominant mark of
Standard Brands, that is, the word PLANTERS, but that it also used in its label
the same coloring scheme of gold, blue, and white, and basically the same lay-
out of words such as "salted peanuts" and "vacuum packed" with similar type and
size of lettering as appearing in Standard Brands' own trademark, all of which
result in a confusing similarity between the two labels.4 Thus, the decision states:
"Furthermore, as to appearance and general impression of the two trademarks, I
find a very confusing similarity." (Emphasis supplied)5
Referring again to the picture We have reproduced, the striking similarity
between the two labels is quite evident not only in the common use of
PLANTERS but also in the other words employed. As a matter of fact, the capital
letter "C" of petitioner's "Cordial" is alike to the capital "C" of Standard's
"Cocktail", with both words ending with an "1".
Admittedly, no producer or manufacturer may have a monopoly of any color
scheme or form of words in a label. But when a competitor adopts a distinctive or
dominant mark or feature of another's trademark and with it makes use of the
same color ensemble, employs similar words written in a style, type and size of
lettering almost identical with those found in the other trademark, the intent to
pass to the public his product as that of the other is quite obvious. Hence, there
is good reason for Standard Brands' to ask why did petitioner herein use the
word PLANTERS, the same coloring scheme, even almost identical size and
contour of the cans, the same lay-out of words on its label when there is a myriad
of other words, colors, phrases, symbols, and arrangements to choose from to
distinguish its product from Standard Brands, if petitioner was not motivated to
simulate the label of the latter for its own can of salted peanuts, and thereby
deceive the public?
A similar question was asked by this Court in Clarke vs. Manila Candy Co., 36
Phil. 100, when it resolved in favor of plaintiff a case of unfair competition based
on an imitation of Clarke's packages and wrappers of its candies the main feature
of which was one rooster. The Court queried thus: "... why, with all the birds in
the air, and all the fishes in the sea, and all the animals on the face of the earth
to choose from, the defendant company (Manila Candy Co.) selected two
roosters as its trademark, although its directors and managers must have been
well aware of the long-continued use of a rooster by the plaintiff with the sale and
advertisement of its goods? ... A cat, a dog, a carabao, a shark or an eagle
stamped upon the container in which candies are sold would serve as well as a
rooster for purposes of identification as the product of defendant's factory. Why
did defendant select two roosters as its trademark ?" (p.109, supra)
Petitioner contends, however, that there are differences between the two
trademarks, such as, the presence of the word "Philippine" above PLANTERS on
its label, and other phrases, to wit: "For Quality and Price, Its Your Outstanding
Buy", the address of the manufacturer in Quezon City, etc., plus a pictorial
representation of peanuts overflowing from a tin can, while in the label of
Standard Brands it is stated that the product is manufactured in San Francisco,
California, and on top of the tin can is printed "Mr. Peanut" and the
representation of a "humanized peanut". (pp. 30-33, petitioner's brief)
We have taken note of those alleged differences but We find them insignificant in
the sense that they are not sufficient to call the attention of the ordinary buyer
that the labeled cans come from distinct and separate sources. The word
"Philippine" printed in small type in petitioner's label may simply give to the
purchaser the impression that that particular can of PLANTERS salted peanuts is
locally produced or canned but that what he is buying is still PLANTERS canned
salted peanuts and nothing else. As regards "Mr. Peanut" on Standard Brands'
label, the same appears on the top cover and is not visible when the cans are
displayed on the shelves, aside from the fact that the figure of "Mr. Peanut" is
printed on the tin cover which is thrown away after opening the can, leaving no
lasting impression on the consumer. It is also for this reason that We do not
agree with petitioner that it is "Mr. Peanut and the Humanized Peanut" which is
the trademark of Standard Brands salted peanuts, it being a mere descriptive
pictorial representation of a peanut not prominently displayed on the very body of
the label covering the can, unlike the term PLANTERS which dominates the
label.
It is correctly observed by respondent Director that the merchandize or goods
being sold by the parties herein are very ordinary commodities purchased by the
average person and many times by the ignorant and unlettered 6 and these are
the persons who will not as a rule examine the printed small letterings on the
container but will simply be guided by the presence of the striking mark
PLANTERS on the label. Differences there will always be, but whatever
differences exist, these pale into insignificance in the face of an evident similarity
in the dominant feature and overall appearance of the labels of the parties.
It is not necessary, to constitute trademark "infringement", that
every word of a trade-mark should be appropriated, but it is
sufficient that enough be taken to deceive the public in the
purchase of a protected article. (Bunte Bros. v. Standard
Chocolates, D.C. Mass., 45 F. Supp. 478, 481)
A trade-name in order to be an `infringement' upon another need
not be exactly like it in form and sound, but it is enough if the one
so resembles another as to deceive or mislead persons of
ordinary caution into the belief that they are dealing with the one
concern when in fact they are dealing with the other. (Foss v.
Culbertson, 136 P. 2d 711, 718, 17 Wash. 2d 610)
Where a trade-mark contains a dominating or distinguishing word,
and purchasing public has come to know and designate the
article by such dominating word, the use of such word by another
in marking similar goods may constitute Infringement though the
marks aside from such dominating word may be dissimilar.
(Queen Mfg. Co. v. lsaac Ginsberg & Bros., C.C.A. Mon., 25 F.
2d 284, 287)
(d) "Infringement" of trade-mark does not depend on the use of
identical words, nor on the question whether they are so similar
that a person looking at one would be deceived into the belief that
it was the other; it being sufficient if one mark is so like another in
form, spelling, or sound that one with not a very definite or clear
recollection as to the real mark is likely to be confused or misled.
(Northam Warren Corporation v. Universal Cosmetic Co., C. C. A;
III., 18 F. 2d 774, 775)
3. What is next submitted by petitioner is that it was error for respondent Director
to have enjoined it from using PLANTERS in the absence of evidence showing
that the term has acquired secondary meaning. Petitioner, invoking American
jurisprudence, asserts that the first user of a tradename composed of common
words is given no special preference unless it is shown that such words have
acquired secondary meaning, and this, respondent Standard Brands failed to do
when no evidence was presented to establish that fact. (pp. 14-16, petitioner's
brief)
The doctrine of secondary meaning is found in Sec. 4 (f), Chapter II-A of the
Trade-Mark Law, viz:
Except as expressly excluded in paragraphs (a), (b), (c) and (d) of
this section, nothing herein shall prevent the registration of a
mark or trade-name used by the applicant which has become
distinctive of the applicant's goods, business or services. The
Director may accept as prima facie evidence that the mark or
trade-name has become distinctive, as applied to or used in
connection with the applicant's goods, business or services, proof
of substantially exclusive and continuous use thereof as a mark
or trade-name by the applicant in connection with the sale of
goods, business or services for the five years next preceding the
date of the filing of the application for its registration. (As
amended by Sec. 3, Rep. Act No. 638.)
This Court held that the doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an article on the market,
because geographically or otherwise descriptive, might nevertheless have been
used so long and so exclusively by one producer with reference to his article that,
in that trade and to that branch of the purchasing public, the word or phrase has
come to mean that the article was his product.7
By way of illustration, is the word "Selecta" which according to this Court is a
common ordinary term in the sense that it may be used or employed by any one
in promoting his business or enterprise, but which once adopted or coined in
connection with one's business as an emblem, sign or device to characterize its
products, or as a badge of authenticity, may acquire a secondary meaning as to
be exclusively associated with its products and business, so that its use by
another may lead to confusion in trade and cause damage to its business.8
The applicability of the doctrine of secondary meaning to the situation now before
Us is appropriate because there is oral and documentary evidence showing that
the word PLANTERS has been used by and closely associated with Standard
Brands for its canned salted peanuts since 1938 in this country. Not only is that
fact admitted by petitioner in the amended stipulation of facts (see p. 2 of this
Decision), but the matter has been established by testimonial (tsn October 4,
1962, pp. 2-8) and documentary evidence consisting of invoices covering the
sale of "PLANTERS cocktail peanuts". (Exhibits C to C-4; D to D-10; E to E-10; F
to F-2) In other words, there is evidence to show that the term PLANTERS has
become a distinctive mark or symbol insofar as salted peanuts are concerned,
and by priority of use dating as far back as 1938, respondent Standard Brands
has acquired a preferential right to its adoption as its trademark warranting
protection against its usurpation by another. Ubi jus ibi remedium. Where there is
a right there is a remedy. Standard Brands has shown the existence of a property
right(Arce Sons & Co. vs. Selecta Biscuit Co., Inc., supra, pp. 262-263) and
respondent Director, has afforded the remedy.
Still on this point, petitioner contends that Standard Brands' use of the trademark
PLANTERS was interrupted during the Japanese occupation and in fact was
discontinued when the importation of peanuts was prohibited by Central Bank
regulations effective July 1, 1953, hence it cannot be presumed that it has
acquired a secondary meaning. We hold otherwise. Respondent Director
correctly applied the rule that non-use of a trademark on an article of
merchandize due to legal restrictions or circumstances beyond one's control is
not to be considered as an abandonment.
In the case of Andres Romero vs. Maiden Form Brassiere Co., Inc., L-18289,
March 31, 1964, 10 SCRA 556, the same question was raised by petitioner
Romero when he filed with the Bureau of Patents a petition to cancel the
registration of the trademark "Adagio" for brassieres manufactured by Maiden
Form Brassiere Co., Inc. His petition having been dismissed by the Director of
Patents, Romero appealed to this Court and one of the issues posed by him was
that when the Government imposed restrictions on importations of brassieres
bearing that particular trademark, there was abandonment of the same by
respondent company which entitled petitioner to adopt it for his own use and
which in fact he had been using for a number of years. That argument was met
by the Court in the words of Justice Jesus Barrera thus:
... The evidence on record shows, on the other hand, that the
trademark "Adagio" was first used exlusively in the Philippines by
appellee in the year 1932. There being no evidence of use of the
mark by others before 1932, or that appellee abandoned use
thereof, the registration of the mark was made in accordance with
the Trademark Law. Granting that appellant used the mark when
appellee stopped using it during the period of time that the
 Government imposed restrictions on importation of respondent's
brassiere being the trademark, such temporary non-use did not
affect the rights of appellee because it was occasioned by
government restrictions and was not permanent, intentional, and
voluntary.
To work an abandonment, the disuse must be
permanent and not ephemeral; it must, be
intentional and voluntary, and not involuntary or
even compulsory. There must be a thoroughgoing
discontinuance of any trade-mark use of the mark
in question (Callman, Unfair Competition and
Trademark, 2nd Ed., p. 1341). 1äw phï1.ñët
The use of the trademark by other manufacturers did not indicate an
intention on the part of appellee to abandon it.
The instances of the use by others of the term Budweiser, cited by the
defendant, fail, even when liberally construed, to indicate an intention upon
the part of the complainant to abandon its rights to that name. "To establish
the defense of abandonment, it is necessary to show not only acts indicating
a practical abandonment, but an actual intention to abandon." Sanlehner v.
Eisener & Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed.
6.0).(Anheuser-Busch, Inc, v. Budweiser Malt Products Corp., 287 F. 245.)
xxx xxx xxx
Non-use because of legal restrictions is not evidence of an intent to
abandon. Non-use of their ancient trade-mark and the adoption of new
marks by the Carthusian Monks after they had been compelled to leave
France was consistent with an intention to retain their right to use their old
mark. Abandonment will not be inferred from a disuse over a period of years
occasioned by statutory restrictions on the name of liquor. (Nims, Unfair
Competition and Trade-Mark, p. 1269.) (pp. 562-564, supra)
(emphasis Ours)
Applying the words of Justice Roman Ozaeta in the "Ang Tibay" case (Ang vs.
Toribio Teodoro, p. 56, supra) to the case now before Us, petitioner herein must
not be allowed to get a free ride on the reputation and selling power of Standard
Brands PLANTERS salted peanuts, for a self-respecting person, or a reputable
business concern as is the case here, does not remain in the shelter of another's
popularity and goodwill but builds one of his own.
4. Findings of fact by the Director of Patents are conclusive and binding on this Court provided
they are supported by substantial evidence. 9 The testimonial and documentary evidence in
addition to the stipulation of facts submitted by the parties fully support the findings of
respondent Director that(1) there is a confusing similarity between the labels or trademarks of
Philippine Nut and Standard Brands used in their respective canned salted peanuts; (2)
respondent Standard Brands has priority of adoption and use of the label with PLANTERS as
the dominant feature and the same has acquired secondary meaning in relation to salted
peanuts; and (3) there has been no abandonment or non-use of said trademark by Standard
Brands which would justify its adoption by petitioner or any other competitor for the sale of
salted peanuts in the market.
PREMISES CONSIDERED, We AFFIRM the decision of respondent Director of Patents
with costs against petitioner.
So Ordered.
Castro (Chairman), Makasiar, Esguerra and Martin, JJ., concur.
Teehankee, J., is on leave.
Footnotes
1 Standard Brands Incorporated is a corporation organized and existing under the
laws of the State of Delaware, United States of America, with its principal business
offices at 625 Madison Avenue, New York, New York, United States of America.
(Amended Partial Stipulation of Facts, par. (a), page 34 original record).
2 See p. 581 for a reproduction of the pictures of the cans for salted peanuts with
respective labels of the parties.
3 Co Tiong Sa vs. Director of Patents, l954, 95 Phil. 1, American Jurisprudence and
Philippine cases, viz, Clarke vs. Manila Candy Co., 36 Phil. 100; Alhambra Cigar &
Cigarette Co. vs. Mojica, 27 Phil. 266: Sapolin Co. vs. Balmaceda, et al., 67 Phil. 705;
La Insular vs. Jao Oge, 47 Phil. 75. See also Forbes, Munn & Co. vs. Ang San To, 40
Phil. 272; Lim Hoa vs. Director of Patents, 100 Phil. 214; Operators, Incorporate vs.
The Director of Patents, et al., No. L-17901, October 29, 1965, 15 ,SCRA. 147:
Etepha, A.G. vs. Director of Patents and Westmont Pharmaceuticals, Inc., No. L-
20635, March 31, 1966, 16 SCRA, 495; Crisanta Y. Gabriel vs. Dr. Jose R. Perez and
Honorable Tiburcio Evalle as Director of Patents, No. L-24075, January 31, 1974, 55
SCRA, 406.
4 See p. 3 for sample of Philippine Nut's labe 5 Page 4 decision, DP, at page 86 of
original record.
6 p. 4, decision DP, supra
G.R. No. L-19297 December 22, 1966
MARVEX COMMERCIAL CO., INC., petitioner,
vs.
PETRA HAWPIA and CO., and THE DIRECTOR OF PATENTS, respondents.
Sta. Ana and Lasam for petitioner.
A.S. Donato for respondent Petra Hawpia and Co.
Office of the Solicitor General for respondent Director of Patents.
CASTRO, J.:
Petra Hawpia & Co., a partnership duly organized under the laws of the
Philippines and doing business at 543 M. de Santos (Botica Divisoria), Manila
(hereinafter referred to as the applicant), on October 14, 1958 filed a petition for
the registration of the trademark "LIONPAS" used on medicated plaster, with the
Philippine Patent Office, asserting its continuous use in the Philippines since
June 9, 1958.1 The Marvex Commercial Co., Inc., a corporation also duly
organized under the laws of the Philippines (hereinafter referred to as the
oppositor), on July 24, 1959 filed an opposition thereto, alleging that the
registration of such trademark would violate its right to and interest in the
trademark "SALONPAS" used on another medicated plaster, which is registered
in its name under Certificate of Registration 5486, issued by the Director of
Patents on September 29, 1956, and that both trademarks when used on
medicated plaster would mislead the public as they are confusingly similar.
After due hearing, the Director of Patents in his decision of August 18, 1961
dismissed the opposition and gave due course to the petition, stating in part that
"confusion, mistake, or deception among the purchasers will not likely and
reasonably occur" when both trademarks are applied to medicated plaster. The
oppositor moved to have the decision reconsidered. This motion was denied in a
resolution of November 27, 1961. The oppositor then interposed the present
appeal.
The issues stated by the Director of Patents in his decision are the same ones
now tendered by the oppositor for resolution, namely, (1) Is the applicant the
owner of the trademark "LIONPAS"?; (2) Should the application be rejected on
the ground that the applicant made false representations in placing the phrase
"Reg. Phil. Pat. Off." below the trademark "LIONPAS" on its cartons?, and (3) Is
the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"?
We do not consider the second issue of any importance; we will thus proceed to
resolve the first and third issues.
Is the applicant the owner of the trademark "LIONPAS?"
Under sections 2 and 2-A of the Trade Mark Law, as amended, the right to
register trademarks, tradenames and service marks by any person, corporation,
partnership or association domiciled in the Philippines or in any foreign country,
is based on ownership, and the burden is upon the applicant to prove such
ownership (Operators, Inc. vs. The Director of Patents, et al., L-17901, Oct. 29,
1965).
The Director of Patents found, on the strength of exhibits 5 and 6 for the
applicant, that the latter has "satisfactorily shown" its ownership of the trademark
sought to be registered. Exhibit 5 is a letter dated June 20, 1958, sent by
"OSAKA BOEKI KAISHA, LTD." to the applicant which tends to show that the
former, for a $1 consideration, has assigned, ceded, and conveyed all its "rights,
interests and goodwill in the tradename LIONPAS Medicated Plaster . . ." in favor
of the latter. Exhibit 6 is a joint "SWORN STATEMENT" which appears to have
been executed by the presidents of "OSAKA BOEKI KAISHA, LTD." and
"ASUNARO PHARMACEUTICAL INDUSTRY CO.", and tends to confirm the
contents of exhibit 5.
A careful scrutiny of exh. 5 will reveal, however, that the sender of the letter,
"OSAKA BOEKI KAISHA LTD.", and which appears to be the seller, is merely a
representative of the manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY
CO." There is no proof that as such representative, the former has been
authorized by the latter to sell the trademark in question. Moreover, exh. 5 on its
face appears to have been signed only by someone whose position in the
company's "Sundries Dept." is not described; the signature is not legible. It is
even contradicted by exh. 6. While exh. 5 shows that "OSAKA BOEKI KAISHA,
LTD." is a representative of "ASUNARO PHARMACEUTICAL INDUSTRY CO.";
exh. 6 asserts that the former is not a representative of the latter, but that it is the
owner of the trademark "LIONPAS" (par. 2, exh. 6). At all events, neither
averment can be accorded the weight of an assignment of ownership of the
trademark in question under the Trade Mark Law. Exh. 5 is not acknowledged.
Exh. 6 does not bear the acknowledgment contemplated by the aforesaid law,
particularly by the last paragraph of section 37 and paragraph 2 of section 31 of
R.A. 166, as amended, which provide as follows:
The registration of a mark under the provisions of this section shall be
independent of the registration in the country of origin and the duration,
validity or transfer in the Philippines of such registration shall be
governed by the provisions of this Act. (Sec. 37, last par.) (Emphasis
ours)
The assignment must be in writing, acknowledged before a notary public
or other officer authorized to administer oaths or perform other notarial
acts and certified under the hand and official seal of the notary or other
officer. (Sec. 31, par. 2)
In this case, although a sheet of paper is attached to exh. 6, on which is
typewritten a certification that the signatures of the presidents of the two named
companies (referring to the signatures in exh. 6) "have been duly written by
themselves", this sheet is unmarked, unpaged, unsigned, undated and unsealed.
We have thumbed the record in quest of any definitive evidence that it is a
correct translation of the Japanese characters found on another unmarked and
unpaged sheet, and have found none.
It follows from the above disquisition that exhs. 5 and 6 are legally insufficient to
prove that the applicant is the owner of the trademark in question.
As a matter of fact, the other evidence on record conclusively belies the import of
exh. 6. Thus exh. A states that the applicant is merely the "exclusive distributor"
in the Philippines of the "LIONPAS" penetrative plaster; exh. A-1 describes the
applicant as the "Philippine sole distributor" of "LIONPAS"; exh. B simply states
that "LIONPAS" is "manufactured exclusively for Petra Hawpia & Co. for
distribution in the Philippines."
Not being the owner of the trademark "LIONPAS" but being merely an importer
and/or distributor of the said penetrative plaster, the applicant is not entitled
under the law to register it in its name (Operators, Inc. vs. Director of
Patents, supra).
Upon the third issue, the applicant preliminarily asserts that there is no
justification for this Court to disturb any finding made by the Director of Patents
on appeal. This assertion is not tenable. Although the Director of Patents is the
official vested by law with the power to administer the registration of trademarks
and tradenames, his opinion on the matter of similarity or dissimilarity of
trademarks and tradenames is not conclusive upon this Court which may pass
upon such determination.
The "SALONPAS" mark is not before this Court. Our meticulous examination of
the entire record has failed to yield a sample of such mark. We have therefore
proceeded to analyze the two marks, vis-a-vis each other, on the basis of what
we can derive from the record for a comparative study. And our conclusion, in
disagreement with that of the Director of Patents, is not based on a comparison
of the appearance, form, style, shape, size or format of the trademarks, which we
can not make because, as we have already observed, the "SALONPAS" mark is
not before us, but on a comparison of the spelling, sound and pronunciation of
the two words.
It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are
confusingly similar in sound.
Both these words have the same suffix, "PAS", which is used to denote a plaster
that adheres to the body with curative powers. "Pas, being merely descriptive,
furnishes no indication of the origin of the article and therefore is open for
appropriation by anyone (Ethepa vs. Director of Patents, L-20635, March 31,
1966) and may properly become the subject of a trademark by combination with
another word or phrase.
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 Footnotes
entirely on the ear" (Operators, Inc. vs. Director of Patents, supra).
1Sec. 2 of the Trade Mark Law requires actual use in the Philippines of
The following random list of confusingly similar sounds in the matter of not less than two months before application may be filed.
trademarks, culled from Nims, Unfair Competition and Trade Marks, 1947, vol. 1,
will reinforce our view that "SALONPAS" and "LIONPAS" are confusingly similar
in sound: "Gold Dust" and "Gold Drop"; "Jantzen" and "Jazz-Sea"; "Silver Flash"
and "Supper-Flash"; "Cascarete" and "Celborite"; "Celluloid" and "Cellonite";
"Chartreuse" and "Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and "Meje";
"Kotex" and "Femetex"; "Zuso" and "Hoo Hoo". Leon Amdur, in his book
"TradeMark Law and Practice", pp. 419-421, cites, as coming within the purview
of the idem sonans rule, "Yusea" and "U-C-A", "Steinway Pianos" and "Steinberg
Pianos", and "Seven-Up" and "Lemon-Up". In Co Tiong vs. Director of Patents,
this Court unequivocally said that "Celdura" and "Cordura" are confusingly similar
in sound; this Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the
name "Lusolin" is an infringement of the trademark "Sapolin", as the sound of the
two names is almost the same.

In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very
much alike. Similarity of sound is sufficient ground for this Court to rule that the
two marks are confusingly similar when applied to merchandise of the same
descriptive properties (see Celanese Corporation of America vs. E. I. Du Pont,
154 F. 2d. 146, 148).

The registration of "LIONPAS" cannot therefore be given due course.

ACCORDINGLY, the decision of the respondent Director of Patents is set aside,

and the petition below of the respondent Petra Hawpia & Co. is hereby
dismissed, at the cost of the latter respondent.

Concepcion, C.J., Reyes, J.B.L., Dizon, Regala, Makalintal, Bengzon, J.P.,

Zaldivar and Sanchez, JJ., concur.

G.R. No. 162311 December 4, 2008
LEVI STRAUSS (PHILS.), INC., petitioner,
vs.
TONY LIM, respondent.
DECISION
REYES, R.T., J.:
THE remedy of a party desiring to elevate to the appellate court an adverse
resolution of the Secretary of Justice is a petition for certiorari under Rule 65. A
Rule 43 petition for review is a wrong mode of appeal.1
During preliminary investigation, the prosecutor is vested with authority and
discretion to determine if there is sufficient evidence to justify the filing of an
information. If he finds probable cause to indict the respondent for a criminal
offense, it is his duty to file the corresponding information in court. However, it is
equally his duty not to prosecute when after an investigation, the evidence
adduced is not sufficient to establish a prima facie case.2
Before the Court is a petition for review on certiorari3 of the Decision4 and
Resolution5 of the Court of Appeals (CA), affirming the resolutions of the
Department of Justice (DOJ) finding that there is no probable cause to indict
respondent Tony Lim, a.k.a. Antonio Guevarra, for unfair competition.
The Facts
Petitioner Levi Strauss (Phils.), Inc. is a duly-registered domestic corporation. It is
a wholly-owned subsidiary of Levi Strauss & Co. (LS & Co.) a Delaware, USA
company.
In 1972, LS & Co. granted petitioner a non-exclusive license to use its registered
trademarks and trade names6 for the manufacture and sale of various garment
products, primarily pants, jackets, and shirts, in the Philippines.7Presently, it is
the only company that has authority to manufacture, distribute, and sell products
bearing the LEVI’S trademarks or to use such trademarks in the Philippines.
These trademarks are registered in over 130 countries, including the
Philippines,8 and were first used in commerce in the Philippines in 1946.9
Sometime in 1995, petitioner lodged a complaint10 before the Inter-Agency
Committee on Intellectual Property Rights, alleging that a certain establishment
in Metro Manila was manufacturing garments using colorable imitations of the
LEVI’S trademarks.11 Thus, surveillance was conducted on the premises of
respondent Tony Lim, doing business under the name Vogue Traders Clothing
Company.12 The investigation revealed that respondent was engaged in the
manufacture, sale, and distribution of products similar to those of petitioner and
under the brand name "LIVE’S."13
On December 13, 1995, operatives of the Philippine National Police (PNP)
Criminal Investigation Unit14 served search warrants15 on respondent’s premises
at 1042 and 1082 Carmen Planas Street, Tondo, Manila. As a result, several
items16 were seized from the premises.17
The PNP Criminal Investigation Command (PNP CIC) then filed a
complaint18 against respondent before the DOJ for unfair competition19 under the
old Article 189 of the Revised Penal Code, prior to its repeal by Section 239 of
Republic Act (RA) No. 8293.20 The PNP CIC claimed that a "confusing similarity"
could be noted between petitioner’s LEVI’s jeans and respondent’s LIVE’S denim
jeans and pants.
In his counter-affidavit,21 respondent alleged, among others, that (1) his products
bearing the LIVE’S brand name are not fake LEVI’S garments; (2) "LIVE’S" is a
registered trademark,22 while the patch pocket design for "LIVE’S" pants has
copyright registration,23 thus conferring legal protection on his own intellectual
property rights, which stand on equal footing as "LEVI’S"; (3) confusing similarity,
the central issue in the trademark cancellation proceedings24 lodged by petitioner,
is a prejudicial question that complainant, the police, and the court that issued
the search warrants cannot determine without denial of due process or
encroachment on the jurisdiction of the agencies concerned; and (4) his goods
are not clothed with an appearance which is likely to deceive the ordinary
purchaser exercising ordinary care.25
In its reply-affidavit, petitioner maintained that there is likelihood of confusion
between the competing products because: (1) a slavish imitation of petitioner’s
"arcuate" trademark has been stitched on the backpocket of "LIVE’S" jeans; (2)
the appearance of the mark "105" on respondent’s product is obviously a play on
petitioner’s "501" trademark; (3) the appearance of the word/phrase "LIVE’S" and
"LIVE’S ORIGINAL JEANS" is confusingly similar to petitioner’s "LEVI’S"
trademark; (4) a red tab, made of fabric, attached at the left seam of the right
backpocket of petitioner’s standard five-pocket jeans, also appears at the same
place on "LIVE’S" jeans; (5) the patch used on "LIVE’S" jeans (depicting three
men on each side attempting to pull apart a pair of jeans) obviously thrives on
petitioner’s own patch showing two horses being whipped by two men in an
attempt to tear apart a pair of jeans; and (6) "LEVI’S" jeans are packaged and
sold with carton tickets, which are slavishly copied by respondent in his own
carton ticket bearing the marks "LIVE’S," "105," the horse mark, and basic
features of petitioner’s ticket designs, such as two red arrows curving and
pointing outward, the arcuate stitching pattern, and a rectangular portion with
intricate border orientation.26
DOJ Rulings
On October 8, 1996, Prosecution Attorney Florencio D. Dela Cruz recommended
the dismissal27 of the complaint. The prosecutor agreed with respondent that his
products are not clothed with an appearance which is likely to deceive the
ordinary purchaser exercising ordinary care. The recommendation was approved
by Assistant Chief State Prosecutor Lualhati R. Buenafe.
On appeal, then DOJ Secretary Teofisto Guingona affirmed the prosecutor’s
dismissal of the complaint on January 9, 1998.28 Prescinding from the basic rule
that to be found guilty of unfair competition, a person shall, by imitation or any
unfair device, induce the public to believe that his goods are those of another,
Secretary Guingona stated:
In the case at bar, complainant has not shown that anyone was actually
deceived by respondent. Respondent’s product, which bears the
trademark LIVE’s, has an entirely different spelling and meaning with the
trademark owned by complainant which is LEVI’s. Complainant’s
trademark comes from a Jewish name while that of respondent is merely
an adjective word. Both, when read and pronounced, would resonate
different sounds. While respondent’s "LIVE’s" trademark may appear
similar, such could not have been intended by the respondent to deceive
since he had the same registered with the appropriate government
agencies. Granting arguendo, that respondent’s trademark or products
possessed similar characteristics with the trademark and products of
complainant, on that score alone, without evidence or proof that such
was a device of respondent to deceive the public to the damage of
complainant no unfair competition is committed.29
On February 13, 1998, petitioner filed a motion for reconsideration of Secretary
Guingona’s resolution, alleging, among others, that only a likelihood of confusion
is required to sustain a charge of unfair competition. It also submitted the results
of a consumer survey30 involving a comparison of petitioner’s and respondent’s
products.
On June 5, 1998, Justice Secretary Silvestre Bello III, Guingona’s successor,
granted petitioner’s motion and directed the filing of an information against
respondent.31
WHEREFORE, our resolution dated 9 January 1998 is hereby reversed
and set aside. You are directed to file an information for unfair
competition under Article 189 of the Revised Penal Code, as amended,
against respondent Tony Lim. Report the action taken thereon within ten
(10) days from receipt hereof.32
Secretary Bello reasoned that under Article 189 of the Revised Penal Code, as
amended, exact similarity of the competing products is not required. However,
Justice Guingona’s resolution incorrectly dwelt on the specific differences in the
details of the products.33 Secretary Bello’s own factual findings revealed:
x x x [I]t is not difficult to discern that respondent gave his products the
general appearance as that of the product of the complainant. This was
established by the respondent’s use of the complainant’s arcuate
backpocket design trademark; the 105 mark which apparently is a spin-
off of the 501 mark of the complainant; the patch which was clearly
patterned after that of the complainant’s two horse patch design
trademark; the red tab on the right backpocket; the wordings which were
 crafted to look similar with the Levis trademark of the complainant; and
even the packaging. In appropriating himself the general appearance of
the product of the complainant, the respondent clearly intended to
deceive the buying public. Verily, any person who shall employ deception
or any other means contrary to good faith by which he shall pass of the
goods manufactured by him or in which he deals, or his business, or
services for those of the one having established good will shall guilty of
unfair competition.
Respondent’s registration of his trademark can not afford him any remedy. Unfair
competition may still be prosecuted despite such registration.34 (Citation omitted)
Respondent then filed his own motion for reconsideration of the Bello resolution.
On May 7, 1999, new DOJ Secretary Serafin Cuevas granted respondent’s
motion and ordered the dismissal of the charges against him.35
CA Disposition
Dissatisfied with the DOJ rulings, petitioner sought recourse with the CA via a
petition for review under Rule 43 of the 1997 Rules of Civil Procedure. On
October 17, 2003, the appellate court affirmed the dismissal of the unfair
competition complaint.
WHEREFORE, premises considered, the petition for review is DENIED
and is accordingly DISMISSED for lack of merit.
SO ORDERED.36
The CA pointed out that to determine the likelihood of confusion, mistake or
deception, all relevant factors and circumstances should be taken into
consideration, such as the circumstances under which the goods are sold, the
class of purchasers, and the actual occurrence or absence of confusion.37
Thus, the existence of some similarities between LIVE’S jeans and LEVI’S
garments would not ipso facto equate to fraudulent intent on the part of
respondent. The CA noted that respondent used affirmative and precautionary
distinguishing features in his products for differentiation. The appellate court
considered the spelling and pronunciation of the marks; the difference in the
designs of the back pockets; the dissimilarity between the carton tickets; and the
pricing and sale of petitioner’s products in upscale exclusive specialty shops. The
CA also disregarded the theory of post-sale confusion propounded by petitioner,
relying instead on the view that the probability of deception must be determined
at the point of sale.38
Issues
Petitioner submits that the CA committed the following errors:
I.
THE COURT OF APPEALS GRAVELY ERRED IN RULING THAT ACTUAL
CONFUSION IS NECESSARYTO SUSTAIN A CHARGE OF UNFAIR
COMPETITION, AND THAT THERE MUST BE DIRECT EVIDENCE OR PROOF OF
INTENT TO DECEIVE THE PUBLIC.
II.
THE COURT OF APPEALS GRAVELY ERRED IN RULING THAT RESPONDENT’S
LIVE’S JEANS DO NOT UNFAIRLY COMPETE WITH LEVI’S ® JEANS AND/OR
THAT THERE IS NO POSSIBILITY THAT THE FORMER WILL BE CONFUSED FOR
THE LATTER, CONSIDERING THAT RESPONDENT’S LIVE’S JEANS BLATANTLY
COPY OR COLORABLY IMITATE NO LESS THAN SIX (6) TRADEMARKS OF
LEVI’S JEANS.
III.
THE COURT OF APPEALS GRAVELY ERRED IN DISREGARDING THE
EVIDENCE ON RECORD, CONSISTING OF THE SCIENTIFICALLY CONDUCTED
MARKET SURVEY AND THE AFFIDAVIT OF THE EXPERT WITNESS ON THE
RESULTS THEREOF, WHICH SHOW THAT RESPONDENT’S LIVE’S JEANS ARE,
IN FACT, BEING CONFUSED FOR LEVI’S JEANS.
IV.
THE COURT OF APPEALS GRAVELY ERRED IN RULING THAT THE ISSUE OF
CONFUSION SHOULD ONLY BE DETERMINED AT THE POINT OF SALE.
 V.
THE COURT OF APPEALS GRAVELY ERRED IN FAILING TO DIRECT THE
SECRETARY OF JUSTICE TO CAUSE THE FILING OF THE APPROPRIATE
INFORMATION IN COURT AGAINST THE RESPONDENT.39(Underscoring supplied)
Our Ruling
In essence, petitioner asks this Court to determine if probable cause exists to
charge respondent with the crime of unfair competition under Article 189(1) of the
Revised Penal Code, prior to its repeal by Section 239 of RA No. 8293.
However, that is a factual issue40 the resolution of which is improper in a Rule 45
petition.41 The only legal issue left for the Court to determine is whether the issue
of confusion should be determined only at the point of sale.
Nonetheless, there is sufficient reason for this Court to dismiss this petition
merely by looking at the procedural avenue petitioner used to have the DOJ
resolutions reviewed by the CA.
Petitioner filed with the CA a petition for review under Rule 43 of the 1997 Rules
of Civil Procedure.42 Rule 43 governs all appeals from [the Court of Tax Appeals
and] quasi-judicial bodies to the CA. Its Section 1 provides:
Section 1. Scope. – This Rule shall apply to appeals from [judgments or
final orders of the Court of Tax Appeals and from] awards, judgments,
final orders or resolutions of or authorized by any quasi-judicial agency in
the exercise of its quasi-judicial functions. Among these agencies are the
Civil Service Commission, Central Board of Assessment Appeals,
Securities and Exchange Commission, Office of the President, Land
Registration Authority, Social Security Commission, Civil Aeronautics
Board, Bureau of Patents, Trademarks and Technology Transfer,
National Electrification Administration, Energy Regulatory Board, National
Telecommunications Commission, Department of Agrarian Reform under
Republic Act No. 6657, Government Service Insurance System,
Employees Compensation Commission, Agricultural Inventions Board,
Insurance Commission, Philippine Atomic Energy Commission, Board of
Investments, Construction Industry Arbitration Commission, and voluntary
arbitrators authorized by law.43
Clearly, the DOJ is not one of the agencies enumerated in Section 1 of Rule 43
whose awards, judgments, final orders, or resolutions may be appealed to the
CA.
The Court has consistently ruled that the filing with the CA of a petition for
review under Rule 43 to question the Justice Secretary’s resolution regarding
the determination of probable cause is an improper remedy.44
Under the 1993 Revised Rules on Appeals from Resolutions in Preliminary
Investigations or Reinvestigations,45 the resolution of the investigating prosecutor
is subject to appeal to the Justice Secretary46 who, under the Revised
Administrative Code, exercises the power of control and supervision over said
Investigating Prosecutor; and who may affirm, nullify, reverse, or modify the
ruling of such prosecutor.47 If the appeal is dismissed, and after the subsequent
motion for reconsideration is resolved, a party has no more appeal or other
remedy available in the ordinary course of law.48 Thus, the Resolution of the
Justice Secretary affirming, modifying or reversing the resolution of the
Investigating Prosecutor is final.49
There being no more appeal or other remedy available in the ordinary course of
law, the remedy of the aggrieved party is to file a petition for certiorari under
Rule 65. Thus, while the CA may review the resolution of the Justice Secretary, it
may do so only in a petition for certiorari under Rule 65 of the 1997 Rules of Civil
Procedure, solely on the ground that the Secretary of Justice committed grave
abuse of discretion amounting to excess or lack of jurisdiction.50
Verily, when respondent filed a petition for review under Rule 43 instead of a
petition for certiorari under Rule 65, the CA should have dismissed it outright.
However, the appellate court chose to determine if DOJ Secretaries Guingona
and Cuevas correctly determined the absence of probable cause.
Now, even if We brush aside technicalities and consider the petition for review
filed with the CA as one under Rule 65, the petition must fail just the same.
While the resolution of the Justice Secretary may be reviewed by the Court,
it is not empowered to substitute its judgment for that of the executive
branch when there is no grave abuse of discretion.51
Courts are without power to directly decide matters over which full discretionary
authority has been delegated to the legislative or executive branch of the
government.52 The determination of probable cause is one such matter because
that authority has been given to the executive branch, through the DOJ.53
It bears stressing that the main function of a government prosecutor is to
determine the existence of probable cause and to file the corresponding
information should he find it to be so. 54 Thus, the decision whether or not to
dismiss the criminal complaint against respondent is necessarily dependent on
the sound discretion of the investigating prosecutor and ultimately, that of the
Secretary of Justice.55
A prosecutor, by the nature of his office, is under no compulsion to file a
particular criminal information where he is not convinced that he has evidence to
prop up its averments, or that the evidence at hand points to a different
conclusion. This is not to discount the possibility of the commission of abuses on
the part of the prosecutor. But this Court must recognize that a prosecutor should
not be unduly compelled to work against his conviction. Although the power and
prerogative of the prosecutor to determine whether or not the evidence at hand is
sufficient to form a reasonable belief that a person committed an offense is not
absolute but subject to judicial review, it would be embarrassing for him to be
compelled to prosecute a case when he is in no position to do so, because in his
opinion he does not have the necessary evidence to secure a conviction, or he is
not convinced of the merits of the case.56
In finding that respondent’s goods were not clothed with an appearance which is
likely to deceive the ordinary purchaser exercising ordinary care, the
investigating prosecutor exercised the discretion lodged in him by law. He found
that:
First, the LIVE’S mark of the respondent’s goods is spelled and
pronounced differently from the LEVI’S mark of the complainant.
Second, the backpocket design allegedly copied by the respondent from
the registered arcuate design of the complainant, appears to be different
in view of the longer curved arms that stretch deep downward to a point
of convergence where the stitches form a rectangle. The arcuate design
for complainant LEVI’s jeans form a diamond instead. And assuming
arguendo that there is similarity in the design of backpockets between the
respondent’s goods and that of the complainant, this alone does not
establish that respondent’s jeans were intended to copy the
complainant’s goods and pass them off as the latter’s products as this
design is simple and may not be said to be strikingly distinct absent the
other LEVI’S trademark such as the prints on the button, rivets, tags and
the like. x x x Further, the presence of accessories bearing Levi’s
trademark was not established as there were no such accessories seized
from the respondent and instead genuine LIVE’S hangtags, button and
patches were confiscated during the search of latter’s premises.
Second, the design of the patches attached to the backpockets of the
respondent’s goods depicts three men on either side of a pair of jeans
attempting to pull apart said jeans, while the goods manufactured by
complainant with patches also attached at the right backpockets depicts
two horses being whipped by two men in an attempt to tear apart a pair
of jeans. It is very clear therefore that the design of the backpocket
patches by the respondent is different from that of the complainant, in the
former the men were trying to pull apart the pants while in the latter
horses are the ones doing the job. Obviously, there is a great difference
between a man and a horse and this will naturally not escape the eyes of
an ordinary purchaser.
Third, the manner by which Levi’s jeans are packed and sold with carton
tickets attached to the products cannot be appropriated solely by
complainant to the exclusion of all other manufacturers of same class. It
frequently happens that goods of a particular class are labeled by all
manufacturer[s] in a common manner. In cases of that sort, no
manufacturer may appropriate for himself the method of labeling or
packaging [of] his merchandise and then enjoin other merchants from
using it. x x x.
 Fourth, evidence shows that there is a copyright registration issued by
the National Library over the backpocket design of the respondent. And
this copyright registration gives the respondent the right to use the same
in his goods x x x.57
The determination of probable cause is part of the discretion granted to the
investigating prosecutor and ultimately, the Secretary of Justice. Courts are not
empowered to substitute their own judgment for that of the executive branch.58
The court’s duty in an appropriate case is confined to a determination of whether
the assailed executive or judicial determination of probable cause was done
without or in excess of jurisdiction or with grave abuse of discretion amounting to
want of jurisdiction.59 For grave abuse of discretion to prosper as a ground for
certiorari, it must be demonstrated that the lower court or tribunal has exercised
its power in an arbitrary and despotic manner, by reason of passion or personal
hostility, and it must be patent and gross as would amount to an evasion or to a
unilateral refusal to perform the duty enjoined or to act in contemplation of law.60
In the case at bar, no grave abuse of discretion on the part of the DOJ was
shown. Petitioner merely harps on the error committed by the DOJ and the CA in
arriving at their factual finding that there is no confusing similarity between
petitioner’s and respondent’s products. While it is possible that the investigating
prosecutor and Secretaries Guingona and Cuevas erroneously exercised their
discretion when they found that unfair competition was not committed, this by
itself does not render their acts amenable to correction and annulment by the
extraordinary remedy of certiorari. There must be a showing of grave abuse of
discretion amounting to lack or excess of jurisdiction.61
We are disinclined to find that grave of abuse of discretion was committed
when records show that the finding of no probable cause is supported by
the evidence, law, and jurisprudence.
Generally, unfair competition consists in employing deception or any other
means contrary to good faith by which any person shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those
of the one having established goodwill, or committing any acts calculated to
produce such result.62
The elements of unfair competition under Article 189(1)63 of the Revised Penal
Code are:
(a) That the offender gives his goods the general appearance of the
goods of another manufacturer or dealer;
(b) That the general appearance is shown in the (1) goods themselves, or
in the (2) wrapping of their packages, or in the (3) device or words
therein, or in (4) any other feature of their appearance;
(c) That the offender offers to sell or sells those goods or gives other
persons a chance or opportunity to do the same with a like purpose; and
(d) That there is actual intent to deceive the public or defraud a
competitor.64
All these elements must be proven.65 In finding that probable cause for unfair
competition does not exist, the investigating prosecutor and Secretaries
Guingona and Cuevas arrived at the same conclusion that there is insufficient
evidence to prove all the elements of the crime that would allow them to secure a
conviction.
Secretary Guingona discounted the element of actual intent to deceive by taking
into consideration the differences in spelling, meaning, and phonetics between
"LIVE’S" and "LEVI’S," as well as the fact that respondent had registered his own
mark.66 While it is true that there may be unfair competition even if the competing
mark is registered in the Intellectual Property Office, it is equally true that the
same may show prima facie good faith.67 Indeed, registration does not negate
unfair competition where the goods are packed or offered for sale and passed off
as those of complainant.68 However, the mark’s registration, coupled with the
stark differences between the competing marks, negate the existence of actual
intent to deceive, in this particular case.
For his part, Justice Cuevas failed to find the possibility of confusion and of intent
to deceive the public, relying on Emerald Garment Manufacturing Corporation v.
Court of Appeals.69 In Emerald, the Court explained that since maong pants or
jeans are not inexpensive, the casual buyer is more cautious and discerning and
would prefer to mull over his purchase, making confusion and deception less
likely.
We cannot subscribe to petitioner’s stance that Emerald Garment cannot apply
because there was only one point of comparison, i.e., "LEE" as it appears
in Emerald Garment’s "STYLISTIC MR. LEE." Emerald Garment is instructive in
explaining the attitude of the buyer when it comes to products that are not
inexpensive, such as jeans. In fact, the Emerald Garment rationale is supported
by Del Monte Corporation v. Court of Appeals,70 where the Court explained that
the attitude of the purchaser is determined by the cost of the goods. There is no
reason not to apply the rationale in those cases here even if only by analogy.
The rule laid down in Emerald Garment and Del Monte is consistent with Asia
Brewery, Inc. v. Court of Appeals,71where the Court held that in resolving cases
of infringement and unfair competition, the courts should take into consideration
several factors which would affect its conclusion, to wit: the age, training and
education of the usual purchaser, the nature and cost of the article, whether the
article is bought for immediate consumption and also the conditions under which
it is usually purchased.72
Petitioner argues that the element of intent to deceive may be inferred from the
similarity of the goods or their appearance.73 The argument is specious on two
fronts. First, where the similarity in the appearance of the goods as packed and
offered for sale is so striking, intent to deceive may be inferred.74 However, as
found by the investigating prosecutor and the DOJ Secretaries, striking similarity
between the competing goods is not present.
Second, the confusing similarity of the goods was precisely in issue during the
preliminary investigation. As such, the element of intent to deceive could not
arise without the investigating prosecutor’s or the DOJ Secretary’s finding that
such confusing similarity exists. Since confusing similarity was not found, the
element of fraud or deception could not be inferred.
We cannot sustain Secretary Bello’s opinion that to establish probable cause, "it
is enough that the respondent gave to his product the general appearance of the
product"75 of petitioner. It bears stressing that that is only one element of unfair
competition. All others must be shown to exist. More importantly, the likelihood of
confusion exists not only if there is confusing similarity. It should also be likely to
cause confusion or mistake or deceive purchasers.76 Thus, the CA correctly ruled
that the mere fact that some resemblance can be pointed out between the marks
used does not in itself prove unfair competition.77 To reiterate, the resemblance
must be such as is likely to deceive the ordinary purchaser exercising ordinary
care.78
The consumer survey alone does not equate to actual confusion. We note that
the survey was made by showing the interviewees actual samples of petitioner’s
and respondent’s respective products, approximately five feet away from them.
From that distance, they were asked to identify the jeans’ brand and state the
reasons for thinking so.79This method discounted the possibility that the ordinary
intelligent buyer would be able to closely scrutinize, and even fit, the jeans to
determine if they were "LEVI’S" or not. It also ignored that a consumer would
consider the price of the competing goods when choosing a brand of jeans. It is
undisputed that "LIVE’S" jeans are priced much lower than "LEVI’S."
The Court’s observations in Emerald Garment are illuminating on this score:
First, the products involved in the case at bar are, in the main, various
kinds of jeans. x x x Maong pants or jeans are not inexpensive.
Accordingly, the casual buyer is predisposed to be more cautious and
discriminating in and would prefer to mull over his purchase. Confusion
and deception, then, is less likely. In Del Monte Corporation v. Court of
Appeals, we noted that:
… Among these, what essentially determines the attitudes of the
purchaser, specifically his inclination to be cautious, is the cost of
the goods. To be sure, a person who buys a box of candies will
not exercise as much care as one who buys an expensive watch.
As a general rule, an ordinary buyer does not exercise as much
prudence in buying an article for which he pays a few centavos as
he does in purchasing a more valuable thing. Expensive and
valuable items are normally bought only after deliberate,
comparative and analytical investigation. But mass products,
low priced articles in wide use, and matters of everyday purchase
requiring frequent replacement are bought by the casual
consumer without great care.80 (Emphasis supplied)
We find no reason to go beyond the point of sale to determine if there is probable WHEREFORE, the petition is DENIED and the appealed Decision of the Court of
cause for unfair competition. The CA observations along this line are worth Appeals AFFIRMED.
restating:
SO ORDERED.
We also find no basis to give weight to petitioner’s contention that the
"post sale confusion" that might be triggered by the perceived similarities RUBEN T. REYES
between the two products must be considered in the action for unfair Associate Justice
competition against respondent.
WE CONCUR:
No inflexible rule can be laid down as to what will constitute unfair
competition. Each case is, in the measure, a law unto itself. Unfair
competition is always a question of fact. The question to be determined in CONSUELO YNARES-SANTIAGO
every case is whether or not, as a matter of fact, the name or mark used Associate Justice
by the defendant has previously come to indicate and designate plaintiff’s Chairperson
goods, or, to state it in another way, whether defendant, as a matter of
fact, is, by his conduct, passing off defendant’s goods as plaintiff’s goods MA. ALICIA AUSTRIA-MARTINEZ MINITA V. CHICO-NAZARIO
or his business as plaintiff’s business. The universal test question is Associate Justice Associate Justice
whether the public is likely to be deceived.
ANTONIO EDUARDO B. NACHURA
Associate Justice
In the case before us, we are of the view that the probability of deception
must be tested at the point of sale since it is at this point that the ordinary
purchaser mulls upon the product and is likely to buy the same under the ATTESTATION
belief that he is buying another. The test of fraudulent simulation is to be
found in the likelihood of deception, or the possibility of deception of I attest that the conclusions in the above Decision had been reached in
some persons in some measure acquainted with an established design consultation before the case was assigned to the writer of the opinion of the
and desirous of purchasing the commodity with which that design has Court’s Division.
been associated.81
CONSUELO YNARES-SANTIAGO
In sum, absent a grave abuse of discretion on the part of the executive branch Associate Justice
tasked with the determination of probable cause during preliminary investigation, Chairperson
We cannot nullify acts done in the exercise of the executive officers’ discretion.
Otherwise, We shall violate the principle that the purpose of a preliminary CERTIFICATION
investigation is to secure the innocent against hasty, malicious and oppressive
prosecution, and to protect him from an open and public accusation of crime, Pursuant to Section 13, Article VIII of the Constitution and the Division
from the trouble, expense and anxiety of a public trial, and also to protect the Chairperson’s Attestation, I certify that the conclusions in the above Decision had
State from useless and expensive trials.82 been reached in consultation before the case was assigned to the writer of the
opinion of the Court’s Division.
 REYNATO S. PUNO 11. "Levi’s and Device" issued on May 22, 1981, renewed on May 22, 2001.
Chief Justice
7
Rollo, pp. 25-26.
Footnotes
8
Id. at 29.
1
Alcaraz v. Gonzalez, G.R. No. 164715, September 20, 2006, 502 SCRA 518.
9
Id. at 30.
2
Monfort III v. Salvatierra, G.R. No. 168301, March 5, 2007, 517 SCRA 447, 459-460.
10
Id. at 307, 341. Dated November 22, 1995.
3
Under Rule 45 of the 1997 Rules of Civil Procedure.
11
Id. at 9.
4
Rollo, pp. 95-103. Dated October 17, 2003. Penned by Associate Justice Eubulo G. Verzola,
12
with Associate Justices Remedios Salazar-Fernando and Edgardo F. Sundiam, concurring. Id. at 31.

13
5
Id. at 105-106. Dated February 20, 2004. CA rollo, pp. 71-72.

14
6
LS & Co.’s registered trademarks and trade names in the Philippines are as follows: Now the Criminal Investigation and Detection Group (CIDG).

1. "Levi’s" issued on August 10, 1982, renewed on August 10, 2002.
2. "Levi Strauss & Co." issued on March 21, 1978.
3. "Arcuate Stitching Design" issued on October 8, 1973, renewed on October 8,
1993.
4. "Two Horse Design" issued on February 12, 1974, renewed on February 12, 1994.
5. "Two Horse Patch" issued on December 27, 1988.
6. "Two Horse Label with Patterned Arcuate Design" issued on October 9, 1985.
7. "Tab Design" issued on May 12, 1976, renewed on May 12, 1996.
8. "Composite Mark (Arcuate, Tab, Two Horse Patch)" issued on December 12, 1988.
9. "501" issued on March 3, 1989.
10. "Levi’s Salmon Ticket & Design" issued on February 13, 1976, renewed on
February 13, 1996.
15
Search Warrant No. 95-757 dated December 12, 1995 in People v. Tony Lim of Vogue
Traders Clothing Company, 1082 Carmen Planas Street, Tondo, Manila, and Search Warrant
No. 95-758 dated December 12, 1995 in People v. Tony Lim of Vogue Traders Clothing
Company, 1042 Carmen Planas Street, Tondo, Manila, both issued by Judge Antonio I. de
Castro, Regional Trial Court of Manila, Branch 3.
16
Pursuant to Search Warrant No. 95-757 implemented at 1082 Carmen Planas Street, Tondo
Manila:
100 Sacks of Live’s pants (20 pants/sack);
1 Box containing 500 sets of Live’s buttons;
12 Sacks of Live’s Hangtags (2,000/sack);
2 Sewing Machines; and
2 Riveter Machines.
Pursuant to Search Warrant No. 95-758 implemented at 1042 Carmen Planas Street,
Tondo Manila:
151 pcs. of unfinished pants with arcuate design;
 24
160 pcs. of finished Westside jeans with arcuate design; IPC Case Nos. 4216 and 4217, Bureau of Patents, Trademarks, and Technology Transfer;
and Civil Case No. 96-76944, RTC Manila, Branch 50.
725 pcs. of Live’s Patches;
25
Rollo, pp. 282-283.
520 pcs. of Live’s Buttons;
26
Id. at 294-295.
900 pcs. of Live’s Rivets;
27
Id. at 222-226.
261 pcs. of back pocket with arcuate design;
28
CA rollo, pp. 4-7. Resolution No. 052, Series of 1998.
1 Singer Sewing Machine with SN-U4884707342;
29 30
Id. at 73-74. Rollo, pp. 375-404.
1 Singer Sewing Machine with SN-U86400783;
31 32 33
Id. at 358-360. Id. at 450. Id. at 449.
1 Juki Sewing Machine with SN-A555-59278;
34 35
Id. at 450. CA rollo, pp. 8-12.
1 Juki Sewing Machine with SN-A555-2-24344;
36 37
Rollo, p. 15. Id. at 13.
1 Juki Sewing Machine with SN-A227-03839;
38 39
Id. at 14-15. Id. at 47.
1 Juki Sewing Machine with SN-D555-38961; and
40
Asia Brewery, Inc. v. Court of Appeals, G.R. No. 103543, July 5, 1993, 224 SCRA 437, 443.
1 Riveter.
41
See Cosmos Bottling Corporation v. National Labor Relations Commission, G.R. No. 146397,
17 July 1, 2003, 405 SCRA 258.
Rollo, pp. 222-223.
42
18 CA rollo, p. 19.
Through a letter dated December 28, 1995.
43
19 As amended by Section 11 of Republic Act No. 9282 entitled "An Act Expanding the
Entitled PNP-CIS/Levi Strauss (Phils.), Inc. v. Tony Lim, docketed as I.S. No. 95-799.
Jurisdiction of the Court of Tax Appeals (CTA), Elevating its Rank to the Level of a Collegiate
Court with Special Jurisdiction and Enlarging its Membership, Amending for the Purpose Certain
20
The Intellectual Property Code of the Philippines. Effective January 1, 1998. Sections or Republic Act No. 1125, As Amended, Otherwise Known as the Law Creating the
Court of Tax Appeals, and for Other Purposes." Approved on March 30, 2004.
21
Rollo, pp. 282-285.
44
Alcaraz v. Gonzalez, supra note 1, at 529; Orosa v. Roa, G.R. No. 140423, July 14, 2006, 495
22 SCRA 22; Santos v. Go, G.R. No. 156081, October 19, 2005, 473 SCRA 350, 361.
Under Certificate of Registration No. 53918 dated November 16, 1992 (Principal Register,
Bureau of Patents, Trademarks and Technology Transfer) and SR 8868 dated November 3,
45
1992 (Supplemental Register, same office). Now the 2000 National Prosecution Service Rules on Appeals.

23 46
Covered by Certificate of Copyright Registration No. I-3838 dated September 25, 1991 issued Filadams Pharma, Inc. v. Court of Appeals, G.R. No. 132422, March 30, 2004, 426 SCRA
by the National Library. 460, 466-467.
47 64
Alcaraz v. Gonzalez, supra note 1, at 529. Sony Computer Entertainment, Inc. v. Supergreen, Incorporated, G.R. No. 161823, March 22,
2007, 518 SCRA 750, 757; NBI-Microsoft Corporation v. Hwang, G.R. No. 147043, June 21,
48 2005, 460 SCRA 428, 445, citing L. Reyes, The Revised Penal Code, Vol. II, 15th ed., p. 282.
See Filadams Pharma, Inc. v. Court of Appeals, supra note 46.
65
49 Mendoza-Arce v. Office of the Ombudsman (Visayas), G.R. No. 149148, April 5, 2002, 380
Alcaraz v. Gonzalez, supra note 1, at 529.
SCRA 325, 336.
50 51
Id. Public Utilities Department v. Guingona, Jr., 417 Phil. 798, 805 (2001). 66
CA rollo, p. 73.
52 53
Id. See Buan v. Matugas, G.R. No. 161179, August 7, 2007, 529 SCRA 263, 270. 67
Agpalo, The Law on Trademark, Infringement and Unfair Competition, 2000 ed., pp. 189-190,
citing R.F. Alexander & Co. v. Ang, 97 Phil. 157 (1955); Parke Davis & Co. v. Kim Foo & Co., 60
54 Phil. 928 (1934).
R.R. Paredes v. Calilung, G.R. No. 156055, March 5, 2007, 517 SCRA 369, 395.

55 68 69
Alcaraz v. Gonzalez, supra note 1, at 529. Id. G.R. No. 100098, December 29, 1995, 251 SCRA 600.

56 70
R.R. Paredes v. Calilung, supra at 395-396. G.R. No. 78325, January 25, 1990, 181 SCRA 410.

57 58 71 72 73
Rollo, pp. 224-225. Alcaraz v. Gonzalez, supra note 1, at 529. G.R. No. 103543, July 5, 1993, 224 SCRA 437. Id. at 455. Rollo, pp. 51-52.

59
First Women’s Credit Corporation v. Baybay, G.R. No. 166888, January 31, 2007, 513 SCRA 74
See note 67, at 190, citing Rueda Hermanos & Co. v. Felix Paglinawan & Co., 33 Phil. 196
637, 644-645. (1916); U.S. v. Gaw Chiong, 23 Phil. 138 (1912); Inchausti & Co. v. Song Fo & Co., 21 Phil. 278
(1912).
60
R.R. Paredes v. Calilung, supra note 54, at 397, citing Sarigumba v. Sandiganbayan, G.R.
75
Nos. 154239-41, February 16, 2005, 451 SCRA 533, 549. CA rollo, p. 459.

61 76
See R.R. Paredes v. Calilung, supra note 54, at 396-397. See Societe Des Produits Nestlé, S.A. v. Court of Appeals, G.R. No. 112012, April 4, 2001,
356 SCRA 207, 215.
62
Reyes, L., The Revised Penal Code, Book II, 13th ed., p. 264.
77
Rollo, p. 100. 78 Pro Line Sports Center, Inc. v. Court of Appeals, G.R. No. 118192, October
63 23, 1997, 281 SCRA 162, 173.
Art. 189. Unfair competition, fraudulent registration of trade-mark, trade-name or service mark,
fraudulent designation of origin, and false description. – The penalty provided in the next
79 80
proceeding article shall be imposed upon: Id. at 380. Emerald Garment Manufacturing Corporation v. Court of Appeals, supra note 69.

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1. Any person who, in unfair competition and for the purposes of deceiving or Rollo, pp. 101-102. 82 R.R. Paredes v. Calilung, supra note 54, at 395.
defrauding another of his legitimate trade or the public in general, shall sell his goods
giving them the general appearance of goods of another manufacturer or dealer,
either as to the goods themselves, or in the wrapping of the packages in which they
are contained or the device or words thereon or in any other features of their
appearance which would be likely to induce the public to believe that the goods
offered are those of a manufacturer or dealer other than the actual manufacturer or
dealer or shall give other persons a chance or opportunity to do the same with a like
purpose.