Law on Intellectual Property Case Digests 1

LAW ON INTELLECTUAL PROPERTY CASE DIGESTS 1. Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc. G.R. No. 180677 February 18, 2003 Facts: Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private investigation group to verify the information. Surveillance and the purchase of jeans from the tailoring shops of Diaz established that the jeans bought from the tailoring shops of Diaz were counterfeit or imitations of LEVI’S 501. Armed with search warrants, NBI agents searched the tailoring shops of Diaz and seized several fake LEVI’S 501 jeans from them. Levi’s Philippines claimed that it did not authorize the making and selling of the seized jeans; that each of the jeans were mere imitations of genuine LEVI’S 501 jeans by each of them bearing the registered trademarks, like the arcuate design, the tab, and the leather patch; and that the seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of the arcuate, tab, and two-horse leather patch. On his part, Diaz admitted being the owner of the shops searched, but he denied any criminal liability. Diaz stated that he did not manufacture Levi’s jeans, and that he used the label “LS Jeans Tailoring” in the jeans that he made and sold; that the label “LS Jeans Tailoring” was registered with the Intellectual Property Office; that his shops received clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles or designs were done in accordance with instructions of the customers; that since the time his shops began operating in 1992, he had received no notice or warning regarding his operations; that the jeans he produced were easily recognizable because the label “LS Jeans Tailoring,” and the names of the customers were placed inside the pockets, and each of the jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;” and that the leather patch on his jeans had two buffaloes, not two horses. Issue: Whether there exists a likelihood of confusion between the trademarks of Levi’s and Diaz. Held: The Court held, through the application of the holistic test, that there was no likelihood of confusion between the trademarks involved. Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole in determining the likelihood of confusion between them. The maongpants or jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very popular in the Philippines. The consuming public knew that the original LEVI’S 501 jeans were under a foreign brand and quite expensive. Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not available in tailoring shops like those of Diaz’s as well as not acquired on a “made-toorder” basis. Under the circumstances, the consuming public could easily discern if the jeans were original or fake LEVI’S 501, or were manufactured by other brands of jeans.

Diaz used the trademark “LS JEANS TAILORING” for the jeans he produced and sold in his tailoring shops. His trademark was visually and aurally different from the trademark “LEVI STRAUSS & CO” appearing on the patch of original jeans under the trademark LEVI’S 501. The word “LS” could not be confused as a derivative from “LEVI STRAUSS” by virtue of the “LS” being connected to the word “TAILORING”, thereby openly suggesting that the jeans bearing the trademark “LS JEANS TAILORING”came or were bought from the tailoring shops of Diaz, not from the malls or boutiques selling original LEVI’S 501 jeans to the consuming public. The prosecution also alleged that the accused copied the “two horse design” of the petitioner-private complainant but the evidence will show that there was no such design in the seized jeans. Instead, what is shown is “buffalo design.” Again, a horse and a buffalo are two different animals which an ordinary customer can easily distinguish. The prosecution further alleged that the red tab was copied by the accused. However, evidence will show that the red tab used by the private complainant indicates the word “LEVI’S” while that of the accused indicates the letters “LSJT” which means LS JEANS TAILORING. Again, even an ordinary customer can distinguish the word LEVI’S from the letters LSJT. In terms of classes of customers and channels of trade, the jeans products of the private complainant and the accused cater to different classes of customers and flow through the different channels of trade. The customers of the private complainant are mall goers belonging to class A and B market group – while that of the accused are those who belong to class D and E market who can only afford Php 300 for a pair of made-to-order pants.

2. Chester Uyco, Winston Uychiyong and Cherry Uyco-Ong v Vicente Lo G.R. No. 202423, January 28, 2013 Facts: Petitioners in this case are the officers of Wintrade Industrial Sales Corp (WINTRADE), seller of kerosene burners in the Philippines. Vicente Lo, on the other hand, claims to be the asssignee of the disputed marks "HIPOLITO & SEA HORSE & TRIANGULAR DEVICE," "FAMA," and other related marks, service marks and trade names “Casa Hipolito S.A. Portugal”, to be used in kerosene burners as well. Lo further alleged that the ultimate owner of said marks is the Portuguese Company GASIREL and that the latter executed a deed of assignment in favor of Lo to use the marks in all countries except Europe and America. Lo subsequently authorized his agent Philippine Burners Manufacturing Corporation (PBMC) to manufacture burners with the aforementioned marks and tradename “Casa Hipolito S.A. Portugal”. During a test buy, Lo was able to purchase a burner with marked "Made in Portugal" and "Original Portugal". He noted that such burners were manufactured by WINTRADE. As such, Lo filed a complaint on the ground that the kerosene burners sold by WINTRADE have caused confusion, mistake and deception on the part of the buying public as to the origin of goods. WINTRADE and its officers contend that the marks "Made in Portugal" and "Original Portugal" refer to “origin of the design” and not “origin of the goods” and that they have certificates of registration with the IPO for use of marks, derived their authority to use from WONDER, their predecessor-in-interest and that PBMC’s licensing agreement with Lo is ineffective for being unnotarized, among others. Issue: Whether or not WINTRADE and its officers are liable for violation of the law on trademarks, tradenames and false designation of origin? Held: Yes. WINTRADE and its officers are liable for violation of the law on trademarks and tradenames and for false designation of origin. They placed the words "Made in Portugal" and "Original Portugal" with the disputed marks knowing fully well — because of their previous dealings with the Portuguese company — that these were the marks used in the products of another. More importantly, they used the marks without any authority from the owner notwithstanding that their products are, in reality, produced in the Philippines, not in Portugal. Hence, probable cause exists to charge the petitioners with false designation of origin. Had they intended to refer to the source of the design or the history of the manufacture, they should have explicitly said so in their packaging. The Supreme Court emphasized that the law on trademarks and trade names precisely precludes a person from profiting from the business reputation built by another and from deceiving the public as to the “origin” of products.

3. In-n-out Burger Inc. vs Sehwani, Incorporated and/or Benita’s Frites G.R. No. 179127, December 24, 2008 Facts: On 2 June 1997, petitioner filed trademark and service mark applications with the Bureau of Trademarks of the IPO for “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design.” Petitioner later found out that respondent Sehwani, Incorporated had already obtained Trademark Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star).” By virtue of a licensing agreement, Benita Frites, Inc. was able to use the registered mark of respondent Sehwani, Incorporated. Petitioner filed an administrative complaint against respondents for unfair competition and cancellation of trademark registration. Petitioner averred that it is the owner of the trade name IN-N-OUT. Petitioner claimed that respondents are making it appear that their goods and services are those of the petitioner, thus, misleading ordinary and unsuspecting consumers that they are purchasing petitioner’s products. Petitioner then sent a demand letter directing respondents to cease and desist from claiming ownership of the mark “INN-OUT” and to voluntarily cancel its trademark registration. The respondents refused to accede to petitioner’s demand, but expressed willingness to surrender the registration of respondent Sehwani, Incorporated of the “IN N OUT” trademark for a fair and reasonable consideration. Respondents, on the other hand, asserted that they had been using the mark “IN N OUT” in the Philippines since 15 October 1982. On 15 November 1991, respondent Sehwani, Incorporated filed with the then Bureau of Patents, Trademarks and Technology Transfer (BPTTT) an application for the registration of the mark “IN N OUT (the inside of the letter “O” formed like a star).” Upon approval of its application, a certificate of registration of the said mark was issued in the name of respondent Sehwani, Incorporated on 17 December 1993. Issue: Whether respondent Sehwani Incorporated is liable for unfair competition. Held: Yes. The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of the goods and (2) intent to deceive the public and defraud a competitor. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown. The evidence on record shows that the respondents were not using their registered trademark but that of the petitioner. Respondent was issued a Certificate of Registration for IN N OUT (with the Inside of the Letter “O” Formed like a Star) for restaurant business in 1993. The restaurant opened only in 2000 but under the name IN-N-OUT BURGER. Apparently, the respondents started constructing the restaurant only after the petitioner demanded that the latter desist from claiming ownership of the mark IN-N-OUT and voluntarily cancel their trademark registration.

4.MCDONALD’S CORPORATION VS. MACJOY FASTFOOD CORPORATION G.R. NO. 166115, FEB. 2, 2007 Facts: On Mar. 14, 1991, respondent Macjoy Fastfood Corporation, a domestic corporation engaged in the sale of Fast food products in Cebu city, filed with BPTT, now IPO, an application for registration of the trademark ‘’MACJOY & DEVICE’’ for fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks. Petitioner McDonald’s Corporation, filed a verified Notice of Opposition against the respondent’s application claiming that the trademark ‘’MACJOY & DEVICE’’ so resembles its corporate logo otherwise known as the Golden Arches or ‘’M’’ design, and its marks ‘’ McDonalds, ‘’McChicken’’,’’MacFries’’, ‘’BigMac’’,’’McDo’’,’’McSpaghetti,’’McSnack’’, and ‘’Mc, such that when used on identical or related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin. On Dec. 28, 1998, the IPO sustained the petitioner’s opposition and rejected the respondent’s application. CA reversed. Issue: Whether or not respondent’s McJoy and Device marks are confusingly similar to petitioner’s ‘’McDonald’s marks’’? Held: Yes. In determining similarity and likelihood of confusion, jurisprudence has developed two test-the dominancy test and the holistic test: The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception; the holistic test requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging. Applying the dominancy test, ‘’ McDonald’s and ‘’MACJOY’’ marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. Respondent alleged that the word ‘’MACJOY’’ is based on the name of its president’s niece, Scarlett Yu Carcell. By its implausible and insufficient explanation as to how and why out of the many choices of words if could have used for its trade name and/or trademark, it chose the word ‘’MACJOY’’, the only logical conclusion deducible therefrom is that the respondent would want to ride high on the establish reputation and goodwill of the MCDONALD’S marks, which, as applied to petitioner’s restaurant business and food products, is undoubtedly beyond question.

5. LEVI STRAUSS (PHILS.), INC., vs TONY LIM, GR 162311,December 4, 2008 Facts: Petitioner Levi Strauss (Phils.), Inc. is a duly-registered domestic corporation. It is a whollyowned 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 tradenames for the manufacture and sale of various garment products, primarily pants, jackets, and shirts, in the Philippines. Presently, 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, and were first used in commerce in the Philippines in 1946. Sometime in 1995, petitioner lodged a complaint before the Inter-Agency Committee on Intellectual Property Rights, alleging that a certain establishment owned by respondent Tony Lim, doing business under the name Vogue Traders Clothing Company, was engaged in the manufacture, sale, and distribution of products similar to those of petitioner and under the brand name “LIVE’S,” and was granted the filing of an information against respondent. Respondent then filed his own motion for reconsideration of the Bello resolution, the DOJ then ordered the dismissal of the complaint.. 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. 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.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. Issues: Petitioner submits that the CA committed the following errors: I. The court of appeals gravely erred in ruling that actual confusion is necessary to 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.

Held: 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. The elements of unfair competition under Article 189(1) 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. All these elements must be proven. In finding that probable cause for unfair competition does not exist, the investigating prosecutor 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. 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. Indeed, registration does not negate unfair competition where the goods are packed or offered for sale and passed off as those of complainant. 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. Petitioner argues that the element of intent to deceive may be inferred from the similarity of the goods or their appearance. 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. 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 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. 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. To reiterate, the resemblance must be such as is likely to deceive the ordinary purchaser exercising ordinary care. 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. This 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.” We find no reason to go beyond the point of sale to determine if there is probable cause for unfair competition. WHEREFORE, the petition is DENIED and the appealed Decision of the Court of Appeals AFFIRMED. SO ORDERED.

6. Shangri-La International Hotel Management, LTD., Shangri-La Properties Inc., Makati Shangri-La Hotel & Resort Inc., and Kuok Philippines Properties, Inc vs Developers Group of Companies, Inc. GR 159938, March 31, 2006 Facts: Respondent claims ownership over the Shangri-La mark and s logo on the strength of its prior use within the country. It filed with the bureau of patents, trademarks and technology transfer an application for registration covering the subject mark and logo. BPTTT issued the corresponding certificate of registration. The Kuok family on the other hand owns a chain of hotels since 1969 and adopted the name Shangri-La. The Kuok Family has opened EDSA Shangri-La and Makati Shangri-La in the Philippines. Both hotels are incorporated in the Philippines. The hotels owned by the Kuok family used the distinct marks of Shangri-La as part of their trade name. The Kuok Family filed with the BPTTT a petition for cancellation of the registration of the Shangri-La mark used by respondent.The case was thereafter heard before the RTC. After trial on the merits, the RTC ruled in favor of DGCIOn appeal, the CA affirmed the ruling of the RTC.On appeal to the SC, petitioner alleged that respondent cannot file an application for registration of the Shangri-La mark because it did not have prior actual commercial use as required by RA 166. Issue: Whether or not the trademark by DGCI cannot be registered? Held: Under RA 166 before a trademark can be registered, it must have been actually used in commerce for not less than two months in the Philippines prior the filing of the application for registration. Registration does not confer upon the registrant an absolute right to the registered mark. It is merely a prima facie proof that the registrant is the owner. Evidence of a prior and continuous use by another can overcome such presumption. Ownership of a mark or trade name may be acquired not by registration but by adoption and use in trade and commerce. Respondent’s own witness testified that the jeepney signboard artist commissioned to create the mark and logo submitted his designs only two and a half months after the filing of the trademark application. Hence respondent cannot claim that the certificate of registration is proof that the two months prior use was complied with. Also it was found that respondent’s president Ramon Syhunliong has been a guest in one of the petitioner’s hotel. Hence there was a possibility that he may have copied the idea there.

CA still gave him the benefit of the doubt; however upon scrutiny of the questioned logos, it appears that the respondent’s logo has oriental overtones. By copying even the exact font and lettering, there arises a certainty that the adoption was deliberate, malicious, and in bad faith.

7. Coffee Partners, Inc., vs San Francisco Coffee & Roastery, Inc.. G.R. No. 169504 : March 3, 2010 Facts: Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. It has a franchise agreement6cЃa with Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL such as "SAN FRANCISCO COFFEE." Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered with the SEC in May 1995. It registered the business name "SAN FRANCISCO COFFEE & ROASTERY, INC." with the Department of Trade and Industry (DTI) in June 1995. Respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc. (BCCPI), which is engaged in the processing, roasting, and wholesale selling of coffee. In 2001, respondent discovered that petitioner was about to open a coffee shop under the name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, petitioners shop caused confusion in the minds of the public as it bore a similar name and it also engaged in the business of selling coffee. Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition. Petitioner denied the allegations in the complaint. Petitioner alleged it filed with the Intellectual Property Office (IPO) applications for registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999 and for class 35 in 2000. BLA-IPO rendered a decision favourable to the respondents and found herein petitioners guilty of trademark ingfringement. ODG-IPO; however reversed the decision of the Bureau which lead respondents to appeal. CA again reversed the decision of the Office of the Director General and affirmed the BLA-IPO’s finding, hence this petition. Issue: Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered with the Intellectual Property Office (IPO). Held: In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what constitutes infringement of an unregistered trade name, thus: (1) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered; (2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer; (3) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services;

(4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and (5) It is without the consent of the trademark or trade name owner or the assignee thereof. Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines. Section 22 of Republic Act No. 166,12cЃa as amended, required registration of a trade name as a condition for the institution of an infringement suit. However, RA 8293, Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or without registration with the IPO, against any unlawful act x x x. Also, applying the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name.

8. Manuel C. Espiritu, Jr., Audie Llona, Freida F. Espiritu, Carlo F. Espiritu, Rafael F. Espiritu, Rolando M. Mirabuna, Hermilyn A. Mirabuna, Kim Roland A. Mirabuna, Kaye Ann A. Mirabuna, Ken Ryan A. Mirabuna, Juanito P. De Castro, Geronima A. Almonite, and Manuel C. Dee, who are the officers and directors of Bicol Gas Refilling Plant Corporation vs Petron Corporation and Carmen J. Doloiras, doing business under the name Kristina Patricia Enterprises GR No. 170981, November 4, 2009 Facts: Petron Corporation sold and distributed LPG in cylinder tanks that carried its trademark “GASUL” and Carmen Dolorias owned and operated Kristina Patricia Enterprises, the exclusive distributor of Gasul LPG in the whole Sorsogon. On the hand, Bicol Gas was also in the business of selling and distributing LPG in Sorsogon but theirs carried the trademark “Bicol Savers Gas”. In the course of trade and competition, any given distributor of LPGs at times acquired possession of LPG cylinder tanks belonging to other distributors operating in the same area. They called these “captured cylinders.” What KPE is doing is that they swap the cylinder tanks with Bicol Gas involving 30 tanks of Gasul with the permission of the Bicol Gas owners. While doing such transaction, KPE’s Manager noticed that Bicol Gas still has a number of Gasul tanks in its yard. It requested that those tanks be returned. But the latter refused because those tanks will be sent to Batangas. However, during the day to day delivery of Bicol Gas in the town of Sorsogon, KPE’s Manager noticed that the truck carrying mostly of Bicol Savers LPG tanks has one unsealed 50-kg Gasul and one 50-kg Shellane tank. When Jose, KPE’s Manager, inquired, the driver said that it was empty but when it was checked, it was not. As a result, Petron and KPE filed a complaint for violation of RA 623 (illegally filing up registered cylinder tanks) , section 155 (infringement of trademarks) and section 169.1 (unfair competition) of the Intellectual Property Code. Issues: Whether or not the facts of the case warranted the filing of charges against the Bicol Gas people for: a) Filing up the LPG tanks registered to another manufacturer without the latter’s consent in violation of RA 623 as amended b) Trademark infringement consisting in Bicol Gas use of trademark that is confusingly similar to Petron’s registered “Gasul” trademark in violation of Section 155 of RA 8293 c) Unfair competition consisting in passing off Bicol Gas- produced LPGs fro Petron – produced Gasul LPG in violation of Section 168.3 of RA 8293 Held: a) The complaint adduced at the preliminary investigation shows that one 50 kg Petron Gasul LPG found in the Bicol Gas truck belonged to their customer who had the same filled up by Bicol Gas. RA 623 as amended punishes any person who without the

written consent of the manufacturer or seller of gases contained in duly registered steel cylinder tanks, fills the steel cylinder or tanks for the purpose of sale, disposal or trafficking, other than the purpose for which the manufacturer or seller registered the same. Consequently, they may be prosecuted for that purpose. b) But as for the crime of trademark infringement, section 155 of RA 8293 provides its enumeration. However, KPE and Petron failed to prove that Bicol Gas painted on its own tanks Petron’s Gasul trademark or confusingly similar version to deceive its customers and cheat Petron. c) As for the charge of unfair competition under section 168.3 of RA 8293, there is no showing that Bicol has been giving its LPG tanks the general appearance of the tanks of Petron’s Gasul. As already stated, the truck full of Bicol Gas tank that the KPE manager apprehended on the road in Sorsogon just have mixed up with the one authentic Gasul tank that belong to Petron. Lastly, Bicol Gas is a Corporation. It is an entity separate and distinct from persons of its officer, directors and stockholders. It has been held however, that corporate officers and employees through whose act, default or omission of the crime, they will be held answerable for the crime but respondents failed to show that Bicol Gas officers and stockholders participated in the crime.

9. PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH MANAGEMENT SA G.R. No. 180073, November 25, 2009 Facts: Respondent Horphag Research Management is a corporation duly organized and existing under the laws of Switzerland and the owner of trademark PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma Corporation. Respondent discovered that petitioner Prosource International was also distributing a similar food supplement using the mark PCO-GENOLS since 1996 and was only discontinued in 2000. Respondent filed a complaint for Infringement of Trademark against petitioner, praying that the latter cease and desist from using the brand PCO-GENOLS for being confusingly similar with respondent’s trademark PYCNOGENOL. Petitioner contended that the two marks were not confusingly similar and denied liability, since it discontinued the use of the mark prior to the institution of the infringement case. Issue: Whether or not petitioners are liable for infringement of trademark. Held: The court ruled in the positive. 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. The gravamen of trademark infringement is the element of "likelihood of confusion" which must be examined from the particular, and sometimes peculiar, circumstances of each case. In determining similarity and likelihood of confusion, jurisprudence has developed two 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 and deception, thus constituting infringement. If the competing trademark contains the main, essential and dominant features of another, and confusion or 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. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive purchasers. 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. In contrast, the Holistic Test entails 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 in order that the observer may draw his conclusion whether one is confusingly similar to the other. In the case at bar, the dominancy test was used in determining whether there was a confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Applying the test, the court found that:

Athough the letters "Y" between P and C, "N" between O and C and "S" after L are missing PCO-GENOLS, nevertheless, when the two words are pronounced, the sound effects are confusingly similar not to mention that they are both described by their manufacturers as a food supplement and thus, identified as such by their public consumers. And although there were dissimilarities in the trademark due to the type of letters used as well as the size, color and design employed on their individual packages/bottles, still the close relationship of the competing products’ name in sounds as they were pronounced, clearly indicates that purchasers could be misled into believing that they are the same and/or originates from a common source and manufacturer. This is not the first time that the court takes into account the aural effects of the words and letters contained in the marks in determining the issue of confusing similarity.

10. TANADA VS ANGARA WIGBERTO E. TAÑADA and ANNA DOMINIQUE COSETENG, as members of the Philippine Senate and as taxpayers; GREGORIO ANDOLANA and JOKER ARROYO as members of the House of Representatives and as taxpayers; NICANOR P. PERLAS and HORACIO R. MORALES, both as taxpayers; CIVIL LIBERTIES UNION, NATIONAL ECONOMIC PROTECTIONISM ASSOCIATION, CENTER FOR ALTERNATIVE DEVELOPMENT INITIATIVES, LIKAS-KAYANG KAUNLARAN FOUNDATION, INC., PHILIPPINE RURAL RECONSTRUCTION MOVEMENT, DEMOKRATIKONG KILUSAN NG MAGBUBUKID NG PILIPINAS, INC., and PHILIPPINE PEASANT INSTITUTE, in representation of various taxpayers and as non-governmental organizations, petitioners, vs. EDGARDO ANGARA, ALBERTO ROMULO, LETICIA RAMOS-SHAHANI, HEHERSON ALVAREZ, AGAPITO AQUINO, RODOLFO BIAZON, NEPTALI GONZALES, ERNESTO HERRERA, JOSE LINA, GLORIA MACAPAGAL-ARROYO, ORLANDO MERCADO, BLAS OPLE, JOHN OSMEÑA, SANTANINA RASUL, RAMON REVILLA, RAUL ROCO, FRANCISCO TATAD and FREDDIE WEBB, in their respective capacities as members of the Philippine Senate who concurred in the ratification by the President of the Philippines of the Agreement Establishing the World Trade Organization; SALVADOR ENRIQUEZ, in his capacity as Secretary of Budget and Management; CARIDAD VALDEHUESA, in her capacity as National Treasurer; RIZALINO NAVARRO, in his capacity as Secretary of Trade and Industry; ROBERTO SEBASTIAN, in his capacity as Secretary of Agriculture; ROBERTO DE OCAMPO, in his capacity as Secretary of Finance; ROBERTO ROMULO, in his capacity as Secretary of Foreign Affairs; and TEOFISTO T. GUINGONA, in his capacity as Executive Secretary, respondents. G.R. No. 118295 May 2, 1997 Facts: This is a petition seeking to nullify the Philippine ratification of the World Trade Organization (WTO) Agreement. Petitioners question the concurrence of herein respondents acting in their capacities as Senators via signing the said agreement. The WTO opens access to foreign markets, especially its major trading partners, through the reduction of tariffs on its exports, particularly agricultural and industrial products. Thus, provides new opportunities for the service sector cost and uncertainty associated with exporting and more investment in the country. These are the predicted benefits as reflected in the agreement and as viewed by the signatory Senators, a “free market” espoused by WTO. Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) intrudes on the power of the Supreme Court to promulgate rules concerning pleading, practice and procedures and is a derogation of legislative power. Issue: Whether the provisions of the Agreement Establishing the World Trade Organization contravene the Philippine Constitution. (NO) Held:

Suffice it to say that the reciprocity clause of WTO more than justifies such intrusion, if any actually exists. Besides, Article 34 does not contain an unreasonable burden, consistent as it is with due process and the concept of adversarial dispute settlement inherent in our judicial system. So too, since the Philippines is a signatory to most international conventions on patents, trademarks and copyrights, the adjustment in legislation and rules of procedure will not be substantial. A WTO Member is required to provide a rule of disputable (note the words “in the absence of proof to the contrary”) presumption that a product shown to be identical to one produced with the use of a patented process shall be deemed to have been obtained by the (illegal) use of the said patented process, (1) where such product obtained by the patented product is new, or (2) where there is “substantial likelihood” that the identical product was made with the use of the said patented process but the owner of the patent could not determine the exact process used in obtaining such identical product. Hence, the “burden of proof” contemplated by Article 34 should actually be understood as the duty of the alleged patent infringer to overthrow such presumption. Such burden, properly understood, actually refers to the “burden of evidence” (burden of going forward) placed on the producer of the identical (or fake) product to show that his product was produced without the use of the patented process. The Senate Act, after deliberation and voting, of voluntarily and overwhelmingly giving its consent to the WTO Agreement thereby making it “a part of the law of the land,” is a legitimate exercise of its sovereign duty and power. By the doctrine of incorporation, the country is bound by generally accepted principles of international law, which are considered to be autom atically part of our own laws. One of the oldest and most fundamental rules in international law is pacta sunt servanda—international agreements must be performed in good faith. “A treaty engagement is not a mere moral obligation but creates a legally binding obligation on the parties. Lastly, notwithstanding objections against possible limitations on national sovereignty, the WTO remains as the only viable structure for multilateral trading and the veritable forum for the development of international trade law.

11. Pribhdas J. Mirpuri vs Court of Appeals, Director of Patents and the Barbizon Corporation G.R. No. 114508, November 19, 1999 Facts: On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the registration of the trademark "Barbizon" for use in brassieres and ladies undergarments. Barbizon Corporation, the private respondent of the case at bar opposed the application on the ground that the mark Barbizon of the applicant is confusingly similar to the trademark Barbizon of which the opposer has not abandoned. Furthermore, it was alleged by the opposer that it shall suffer damage by the registration of the mark Barbizon and its business reputation and goodwill will suffer great and irreparable injury, and that the use by the applicant by the said mark which resembles the trademark used and owned by oppose constitutes an unlawful appropriation of a mark previously used in the Philippines and not abandoned therefore a statutory violation of Sec 4 (d) of Republic Act No. 166, as amended. The opposition was dismissed and Escobar was issued a certificate of registration for the trademark “Barbizon”, and subsequently Escobar assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri. However, Escobar failed to file an Affidavit of Use of the trademark so Escobar’s certificate of registration was cancelled. Consequently, she reapplied for the registration of the cancelled trademark. Opposer's BARBIZON as well as its BARBIZON and Bee Design and BARBIZON and Representation of a Woman trademarks are deemed to qualify as well-known trademarks. Issue: Whether or not the Convention of Paris for the Protection of Industrial Property affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark Held: On record, there can be no doubt that respondent-applicant's sought-to-be-registered trademark BARBIZON is similar, in fact obviously identical, to opposer's alleged trademark BARBIZON, in spelling and pronunciation. The only appreciable but very negligible difference lies in their respective appearances or manner of presentation. Respondentapplicant's trademark is in bold letters (set against a black background), while that of the opposer is offered in stylish script letters. The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. The Convention is essentially a compact among various countries which, as members of the Union, have pledged to accord to citizens of the other member countries trademark and other rights comparable to those accorded their own citizens by their domestic laws for an effective protection against unfair competition. In short, foreign nationals are to be given the same treatment in each of the member countries

as that country makes available to its own citizens. Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property. The main argument is embedded on Art 6 of the Paris Convention which governs the protection of well-known marks. The essential requirement of the said article is that the trademark to be protected must be "well-known" in the country where protection is sought. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court

12. McDonald’s Corporation and McGeorge Food Industries, Inc. vs L.C. Big Mak Burger, Inc., et al G.R. No. 143993, August 18, 2004 Facts: McDonald’s is a corporation organized under the laws of Delaware which operates by itself or through its franchisees a global chain of fast-food restaurants. It owns a family of marks including “Big Mac” for their “double-decker hamburger sandwich.” This trademark was registered with the US Trademark Registry on October 16, 1979. Thus, McDonald’s displays the “Big Mac” mark in their items and paraphernalia. L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. The menu includes hamburger sandwiches. On October 25, 1988, they applied for the registration of the “Big Mak” mark for their hamburger sandwiches which McDonald’s opposed, the latter alleging that “Big Mak” was a colorable imitation of its registered “Big Mac” mark for the same food products. McDonald’s wrote to the chairman of the Board of Directors of L.C. Big Mak Burger requesting the latter to desist from using “Big Mac” mark but there was no reply. McDonald’s then sued L.C. Big Mak for infringement and unfair competition. Issue: Whether or not L.C. Big Mak Burger, Inc. is liable for infringement and unfair competition. Held: Yes. The Court, in holding the respondents liable, relied on the dominancy test rather than 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 theadoption 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. 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 in "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 short, aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having the same letters and the second word having the same first two letters. In spelling, considering the Filipino language, even the last letters of both marks are the same.

Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the features of "Big Mac." Applied to the same food product of hamburgers, the two marks will likely result in confusion in the public mind.

13. Mighty Corporation and La Campana Fabrica De Tabaco, Inc. vs. E. & J. Gallo Winery and The Andresons Group, Inc. G.R. No. 154342 July 14, 2004 Facts: Respondent Gallo Winery is a foreign corporation not doing business in the Philippines, but organized under the laws of California, USA. It uses the GALLO and ERNEST & JULIO GALLO wine trademarks. Andresons has been Gallo Winery’s exclusive wine importer and distributor in the Philippines. GALLO wine trademark was registered in the Philippine Patent Office on November 16, 1971. Mighty Corporation and La Campana are engaged in the cultivation, manufacture, and sale of tobacco products which they have been using the GALLO cigarette trademark since 1973. GALLO cigarette trademark was registered on 1985 in the Philippine Patent Office. Respondents sued petitioner for trademark and trade name infringement and unfair competition Petitioners alleged that the cigarettes and wines were totally unrelated products and that Gallo Winery’s GALLO trademarks only covers wine and does not cover cigarettes, and that the wines and cigarettes were sold through different channel of trade, that the GALLO cigarettes were low-cost items. Issue: Whether or not there is infringement and/or unfair competition Held: No. Petitioners and respondents both use "GALLO" in the labels of their respective cigarette and wine products. But, as held in many cases, the use of an identical mark does not, by itself, lead to a legal conclusion that there is trademark infringement. First, there is difference in the features of the marks used by the petitioners and the respondent: The dominant feature of the GALLO cigarette trademark is the device of a large rooster facing left, outlined in black against a gold background. The rooster’s color is either green or red – green for GALLO menthols and red for GALLO filters. Directly below the large rooster device is the word GALLO. The rooster device is given prominence in the GALLO cigarette packs in terms of size and location on the labels. Also, as admitted by respondents themselves, on the side of the GALLO cigarette packs are the words "MADE BY MIGHTY CORPORATION," thus clearly informing the public as to the identity of the manufacturer of the cigarettes. On the other hand, GALLO Winery’s wine and brandy labels are diverse. In many of them, the labels are embellished with sketches of buildings and trees, vineyards or a bunch of grapes while in a few, one or two small roosters facing right or facing each other (atop the EJG crest, surrounded by leaves or ribbons), with additional designs in green, red and yellow colors, appear as minor features thereof. Directly below or above these sketches is

the entire printed name of the founder-owners, "ERNEST & JULIO GALLO" or just their surname "GALLO," which appears in different fonts, sizes, styles and labels, unlike petitioners’ uniform casque-font bold-lettered GALLO mark. Moreover, on the labels of Gallo Winery’s wines are printed the words "VINTED AND BOTTLED BY ERNEST & JULIO GALLO, MODESTO, CALIFORNIA." Second, the products are not sold in the same channels of trade. GALLO cigarettes are inexpensive items while GALLO wines are not. GALLO wines are patronized by middle-to-high-income earners while GALLO cigarettes appeal only to simple folks like farmers, fishermen, laborers and other low-income workers. Indeed, the big price difference of these two products is an important factor in proving that they are in fact unrelated and that they travel in different channels of trade. There is a distinct price segmentation based on vastly different social classes of purchasers. GALLO cigarettes and GALLO wines are not sold through the same channels of trade. GALLO cigarettes are Philippine-made and petitioners neither claim nor pass off their goods as imported or emanating from Gallo Winery. GALLO cigarettes are distributed, marketed and sold through ambulant and sidewalk vendors, small local sari-sari stores and grocery stores in Philippine rural areas, mainly in Misamis Oriental, Pangasinan, Bohol, and Cebu. On the other hand, GALLO wines are imported, distributed and sold in the Philippines through Gallo Winery’s exclusive contracts with a domestic entity, which is currently Andresons. By respondents’ own testimonial evidence, GALLO wines are sold in hotels, expensive bars and restaurants, and high-end grocery stores and supermarkets, not through sari-sari stores or ambulant vendors. Petitioners are not liable for trademark infringement or unfair competition because the petitioners never attempted to pass off their cigarettes as those of respondents. There is no evidence of bad faith or fraud imputable to petitioners in using their GALLO cigarette vmark.

14. SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs. COURT OF APPEALS and CFC CORPORATION. G. R. No. 112012, April 4, 2001 Facts: CFC Corporation filed with the BPTTT an application for the registration of the trademark "FLAVOR MASTER" for instant coffee. Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and domiciled in Switzerland, claimed that the trademark of private respondent’s product is "confusingly similar to its trademarks for coffee and coffee extracts, MASTER ROAST and MASTER BLEND." Nestle Philippines, Inc. claimed that the use of CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word present in the three (3) trademarks is "MASTER"; or that the goods of CFC might be mistaken as having originated from the latter. CFC argued that FLAVOR MASTER, is not confusingly similar with the former’s trademarks, MASTER ROAST and MASTER BLEND, except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the three trademarks are very different from each other – in meaning, spelling, pronunciation, and sound. CFC further argued that its trademark, FLAVOR MASTER, "is clearly very different from any of Nestle’s alleged trademarks MASTER ROAST and MASTER BLEND, especially when the marks are viewed in their entirety, by considering their pictorial representations, color schemes and the letters of their respective labels." BPTTT: denied CFC’s application for registration. Court of Appeals: reversed decision of BPTTT. Issue: Whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND. Held: The petition is impressed with merit. A trademark has been generally defined as "any word, name, symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others." Section 4 (d) of Republic Act No. 166 or the Trademark Law: 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 (d) Consists of or comprises a mark or trade-name which so resembles a mark or tradename 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; xxx xxx xxx The law prescribes a more stringent standard in that there should not only be confusing similarity but that it should not likely cause confusion or mistake or deceive purchasers. 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. In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. 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. The mark must be considered as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. As what appellees would want it to be when they essentially argue that much of the confusion springs from appellant CFC’s use of the word "MASTER" which appellees claim to be the dominant feature of their own trademarks that captivates the prospective consumers. Be it further emphasized that 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. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee, and would therefore be "less inclined to closely examine specific details of similarities and dissimilarities" between the two competing products, then it would be less likely for the ordinary purchaser to notice that CFC’s trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s uses red and brown. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. It must be emphasized that the products bearing the trademarks in question are "inexpensive and common" household items bought off the shelf by "undiscerningly rash" purchasers. As such, if the ordinary purchaser is "undiscerningly rash", then he would not have the time nor the inclination to make a keen and perceptive examination of the physical discrepancies in the trademarks of the products in order to exercise his choice. Court agrees with the BPTTT when it applied the test of dominancy.

It is the observation of this Office that much of the dominance which the word MASTER has acquired through Opposer’s advertising schemes is carried over when the same is incorporated into respondent-applicant’s trademark FLAVOR MASTER. Thus, when one looks at the label bearing the trademark FLAVOR MASTER (Exh. 4) one’s attention is easily attracted to the word MASTER, rather than to the dissimilarities that exist. Therefore, the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched. The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

15. Amigo Manufacturing, Inc. vs Cluett Peabody Cp., Inc. G.r. No. 139300, March 14, 2001. Facts: Respondent in this case Cluett Peabody Co., Inc. a New York base corporation filed a case against petitioner Amigo Manufacturing Inc. a Philippine base corporation for cancellation of trademark. Respondent claims an 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. The said decision was appealed to the CA, finding respondent’s motion for reconsideration meritorious because Petitioner's mark is a combination of the different registered marks owned by respondent. Issue: 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. Held: No. Even if 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. But 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.” 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. 166 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. 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 this 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.

16. ASIA BREWERY, INC , vs.THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION G.R. No. 103543, July 5, 1993 Facts: San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market. Trial Court dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition against" SMC. SMC appealed to the Court of Appeals, the Court of Appeals reversed the trial court. Issue: Whether ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN MIGUEL PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN? Held: No. Infringement is determined by the "test of dominancy" rather than by differences or variations in the details of one trademark and of another. The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. "Pilsen" is a "primarily geographically descriptive word," hence, non-registerable and not appropriable by any beer manufacturer.

17. Societe Des Produits vs. Martin T. Dy Gr no. 172276 August 8, 2010 Facts: Petitioner is a foreign corporation organized under Switzerland laws. Petitioner owns "NAN" trademark for its infant powered milk products. Petitioner distributed and sells Nan milk products in the Philippines. Respondent owns 5M Enterprises that imports Sunny Boy milk from Australia and repacks them into 3 sizes of plastic bags carrying the name "Nanny". A letter of request was sent to Dy ordering him to restrain from using Nanny as this infringes Nan trademark. When Dy did not act on the request, a complaint for trademark infringement was filed before RTC Dumaguete. It was dismissed later on. On appeal, the court remanded the case to the lower court for further proceedings. Subsequently, the case was transferred to RTC Cebu, a special court designated for intellectual property rights' cases. Issue: WON there was trademark infringement Held: Yes. The court applied the dominancy test when it found out that Nanny is confusingly similar to Nan. Nan is the prevalent feature of Nestle's line of infant powdered milk products. The first 3 letters of Nanny is the same as the letters of Nan. When both are pronounced, the aural effect is confusingly similar. Furthermore, Nan and Nanny have the same classification, descriptive properties and physical attributes. Both are classified under Class 6, both are milk products, and both are powdered in form. They are also displayed in the milk section. Finally, the trademark owner is not only protected by law in guarding his goods or business from actual market competition with identical or similar products of the parties but also extends to all cases as it would likely confuse the public into thinking that the complaining party has extended his business into the field or is in any way connected with the activities of the infringer.

18. Fredco Manufacturing Corporation v. President and Fellows of Harvard College G.R. No 185917, June 11, 2011 Fredco Manufacturing Corporation filed before the Bureau of Legal Affairs of the Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College for the mark “Harvard Veritas Shield Symbol”. Fredco claimed that Harvard University had no right to register the mark, since its Philippine registration was based on a foreign registration. Hence,Harvard University could not have been considered as a prior user of the mark in the Philippines. Fredco explained that the mark was first used in the Philippines by its predecessor-ininterest New York Garments as early as 1982, and a certificate of registration was then issued in 1988 for goods under class 25. Although the registration was cancelled for the non-filing of an affidavit of use, the fact remained that the registration preceded Harvard University’s use of the subject mark in the Philippines. Harvard University, on the other hand claimed that the name and mark “Harvard” was adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, USA. The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561. It found Fredco to be the prior user and adopter of the mark “Harvard” in the Philippines. On appeal, the Office of the Director General of the Intellectual Property Office reversed the BLA ruling on the ground that more than the use of the trademark in the Philippines, the applicant must be the owner of the mark sought to be registered. Fredco, not being the owner of the mark, had no right to register it. The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision with the Supreme Court. In its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the issue of who had a better right to the mark. The SC held that: Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark can be registered, it must have been actually used in commerce for not less than two months in the Philippines prior to the filing of an application for its registration. While Harvard University had actual prior use of its marks abroad for a long time, it did not have actual prior use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its application for registration of the mark "Harvard" with the then Philippine Patents Office. However, Harvard University's registration of the name "Harvard" is

based on home registration which is allowed under Section 37 of R.A. No. 166. As pointed out by Harvard University in its Comment: Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the applicant thereof must prove that the same has been actually in use in commerce or services for not less than two (2) months in the Philippines before the application for registration is filed, where the trademark sought to be registered has already been registered in a foreign country that is a member of the Paris Convention, the requirement of proof of use in the commerce in the Philippines for the said period is not necessary. An applicant for registration based on home certificate of registration need not even have used the mark or trade name in this country.” “In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks registered under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under this Act x x x," which does not require actual prior use of the mark in the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted under R.A. No. 8293, any alleged defect arising from the absence of actual prior use in the Philippines has been cured by Section 239.2.” The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even without registration of such trade name in the Philippines. It explained: “There is no question then, and this Court so declares, that "Harvard" is a well-known name and mark not only in the United States but also internationally, including the Philippines.

19. E.Y. Industrial Sales Inc. and Engracio Yap vs. Shen Dar Electricity and Machinery Co. G.R. No. 184850, October 20, 2010 FACTS: EYIS is a domestic corporation engaged in the production, distribution and sale of air compressors and other industrial tools and equipment. Petitioner Engracio Yap is the Chairman of the Board of Directors of EYIS. Respondent Shen Dar, on the other hand, is a Taiwan-based foreign corporation engaged in the manufacture of air compressors. Both companies claimed to have the right to register the trademark “VESPA” for air compressors. From 1997 to 2004, EYIS imported air compressors from Shen Dar through sales contracts. In the Sales Contract dated April 20, 2002, for example, Shen Dar would supply EYIS in one (1) year with 24 to 30 units of 40-ft. containers worth of air compressors identified in the Packing/Weight Lists simply as SD-23, SD-29, SD-31, SD-32, SD-39, SD-67 and SD-68. In the corresponding Bill of Ladings, the items were described merely as air compressors. There is no documentary evidence to show that such air compressors were marked “VESPA.” On June 9, 1997, Shen Dar filed a Trademark Application with the IPO for the mark “VESPA, Chinese Characters and Device” for use on air compressors and welding machines. On July 28, 1999, EYIS filed a Trademark Application also for the mark “VESPA,” for use on air compressors. On January 18, 2004, the IPO issued COR No. 4-1999-005393 in favor of EYIS. Thereafter, on February 8, 2007, Shen Dar was also issued COR No. 4-1997-121492. In the meantime, on June 21, 2004, Shen Dar filed a Petition for Cancellation of EYIS’ COR with the BLA. In the Petition, Shen Dar primarily argued that the issuance of the COR in favor of EYIS violated Section 123.1 paragraphs (d), (e) and (f) of Republic Act No. (RA) 8293, otherwise known as the Intellectual Property Code (IP Code), having first filed an application for the mark. Shen Dar further alleged that EYIS was a mere distributor of air compressors bearing the mark “VESPA” which it imported from Shen Dar. Shen Dar also argued that it had prior and exclusive right to the use and registration of the mark “VESPA” in the Philippines under the provisions of the Paris Convention. The BLA and the IPO Director General denied Shen Dar’s petition. However, the Court of Appeals reversed the decision and ruled in favor of herein respondent. Hence, this appeal on Certiorari. ISSUE: Whether or not E.Y. Indiustrial Sales is the true owner of the mark “Vespa” HELD:

YES. Under Section 123(d) of RA 8293, the registration of a mark is prevented with the filing of an earlier application for registration. This must not, however, be interpreted to mean that ownership should be based upon an earlier filing date. While RA 8293 removed the previous requirement of proof of actual use prior to the filing of an application for registration of a mark, proof of prior and continuous use is necessary to establish ownership of a mark. Such ownership constitutes sufficient evidence to oppose the registration of a mark.

Sec. 134 of the IP Code provides that “any person who believes that he would be damaged by the registration of a mark x x x” may file an opposition to the application. The term “any person” encompasses the true owner of the mark -- the prior and continuous user. Notably, the Court has ruled that the prior and continuous use of a mark may even overcome the presumptive ownership of the registrant and be held as the owner of the mark. Here, the incontrovertible truth, as established by the evidence submitted by the parties, is that Petitioner E.Y. Industrial Sales is the prior user of the mark. On the other hand, Shen Dar failed to refute the evidence cited by the BLA in its decision. More importantly, Shen Dar failed to present sufficient evidence to prove its own prior use of the mark “VESPA.” As such, E.Y. Industrial Sales must be considered as the prior and continuous user of the mark “VESPA” and its true owner. Hence, E.Y. Industrial Sales is entitled to the registration of the mark in its name.