ANA L. ANG vs.

TORIBIO TEODORO

Facts:

Respondent Toribio Teodoro, has continuously used "Ang Tibay," both as a trade-mark and as
a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910.
He formally registered it as trade-mark on September 29, 1915, and as trade-name on January
3, 1933. Toribio Teodoro, then an unknown young man making slippers with his own hands
but now a prominent business magnate and manufacturer with a large factory operated with
modern machinery by a great number of employees, has steadily grown with his business to
which he has dedicated the best years of his life and which he has expanded to such
proportions that his gross sales from 1918 to 1938 aggregated P8,787,025.65. His sales in
1937 amounted to P1,299,343.10 and in 1938, P1,133,165.77. His expenses for advertisement
from 1919 to 1938 aggregated P210,641.56.

Petitioner, registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932,
and established a factory for the manufacture of said articles in the year 1937. In the following
year (1938) her gross sales amounted to P422,682.09. Neither the decision of the trial court
nor that of the Court of Appeals shows how much petitioner has spent or advertisement. But
respondent in his brief says that petitioner "was unable to prove that she had spent a single
centavo advertising "Ang Tibay" shirts and pants prior to 1938. In that year she advertised the
factory which she had just built and it was when this was brought to the attention of the
appellee that he consulted his attorneys and eventually brought the present suit."

TRIAL COURT

Absolved the defendant from the complaint, on the grounds that the two trademarks are
dissimilar and are used on different and non-competing goods; that there had been no
exclusive use of the trade-mark by the plaintiff; and that there had been no fraud in the use of
the said trade-mark by the defendant because the goods on which it is used are essentially
different from those of the plaintiff.

COURT OF APPEALS

Reversed that judgment, holding that by uninterrupted an exclusive use since 191 in the
manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary
meaning; that the goods or articles on which the two trade-marks are used are similar or
belong to the same class; and that the use by petitioner of said trade-mark constitutes a
violation of sections 3 and 7 of Act No. 666.

PETIONER’S CONTENTION

The phrase "Ang Tibay" as employed by the respondent on the articles manufactured by him is
a descriptive term because, "freely translate in English," it means "strong, durable, lasting." He
invokes section 2 of Act No. 666, which provides that words or devices which related only to the
name, quality, or description of the merchandise cannot be the subject of a trade-mark.

RESPONDENT’S CONTENTIO

On the other hand, counsel for the respondent, in an equally well-prepared and exhaustive
brief, contend that the words "Ang Tibay" are not descriptive but merely suggestive and may
properly be regarded as fanciful or arbitrary in the legal sense. The cite several cases in which
similar words have been sustained as valid trade-marks, such as "Holeproof" for hosiery,   "ideal
for tooth brushes,  and "Fashionknit" for neckties and sweaters.

Issues:

1. WON the words “Ang Tibay” are considered as descriptive terms

2. WON the words "Ang Tibay" had acquired a secondary meaning.

3. WON there is trademark infringement and/or unfair competition between unrelated

goods.

Held:

I.

The word "ang" is a definite article meaning "the" in English. It is also used as an adverb, a
contraction of the word "anong" (what or how). "Ang Tibay" is not a descriptive term within the
meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and
legally be appropriated as a trade-mark or trade-name. In this connection we do not fail to note
that when the petitioner herself took the trouble and expense of securing the registration of
these same words as a trademark of her products she or her attorney as well as the Director of
Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive term
and hence could be legally used and validly registered as a trade-mark. It seems stultifying and
puerile for her now to contend otherwise, suggestive of the story of sour grapes. Counsel for the
petitioner says that the function of a trade-mark is to point distinctively, either by its own
meaning or by association, to the origin or ownership of the wares to which it is applied. That
is correct, and we find that "Ang Tibay," as used by the respondent to designate his wares, had
exactly performed that function for twenty-two years before the petitioner adopted it as a trade-
mark in her own business. Ang Tibay shoes and slippers are, by association, known
throughout the Philippines as products of the Ang Tibay factory owned and operated by the
respondent Toribio Teodoro.

II.

It is unnecessary to apply here the doctrine of "secondary meaning" in trade-mark parlance.

This doctrine is to the effect that a word or phrase originally incapable of exclusive
appropriation with reference to an article of 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. We have said that the phrase
"Ang Tibay," being neither geographic nor descriptive, was originally capable of exclusive
appropriation as a trade-mark. But were it not so, the application of the doctrine of secondary
meaning made by the Court of Appeals could nevertheless be fully sustained because, in any
event, by respondent's long and exclusive use of said phrase with reference to his products and
his business, it has acquired a proprietary connotation.

III.
YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and
Unfair Trading, the test employed by the courts to determine whether noncompeting goods are
or are not of the same class is confusion as to the origin of the goods of the second user.
Although two noncompeting articles may be classified under two different classes by the Patent
Office because they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the simultaneous use on them
of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or
personal source, of the second user’s goods. They would be considered as not falling under the
same class only if they are so dissimilar or so foreign to each other as to make it unlikely that
the purchaser would think the first user made the second user’s goods. The Court of Appeals
found in this case that by uninterrupted and exclusive use since 1910 of respondent’s
registered trade-mark on slippers and shoes manufactured by him, it has come to indicate the
origin and ownership of said goods. It is certainly not farfetched to surmise that the selection
by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a
free ride on the reputation and selling power it has acquired at the hands of the respondent.

ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL

Facts:

Selecta Biscuit Company, Inc, filed with the Philippine Patent Office a petition for the
registration of the word "SELECTA" as trade-mark to be use in its bakery products alleging that
it is in actual use thereof for not less than two months before said date and that "no other
persons, partnership, corporation or association ... has the right to use said trade-mark in the
Philippines, either in the identical form or in any such near resemblance thereto, as might be
calculated to deceive." Its petition was referred to an examiner for study who found that the
trade-mark sought to be registered resembles the word "SELECTA" used by the Acre and Sons
and Company, hereinafter referred to as petitioner, in its milk and ice cream products so that
its use by respondent will cause confusion as to the origin of their respective goods.
Consequently, he recommended that the application be refused. However, upon
reconsideration, the Patent Office ordered the publication of the application for purposes of
opposition.

Petitioner filed its opposition on thegrounds: (1) that the mark "SELECTA" had been
continuously used by petitioner in the manufacture and sale of its products, including cakes,
bakery products, milk and ice cream from the time of its organization and even prior thereto by
its predecessor-in-interest, Ramon Arce; (2) that the mark "SELECTA" has already become
identified with name of the petitioner and its business; (3) that petitioner had warned
respondent not to use said mark because it was already being used by the former, but that the
latter ignored said warning; (4) that respondent is using the word "SELECTA" as a trade-mark
as bakery products in unfair competition with the products of petitioner thus resulting in
confusion in trade; (5) that the mark to which the application of respondent refers has striking
resemblance, both in appearance and meaning, to petitioner's mark as to be mistaken therefor
by the public and cause respondent's goods to be sold as petitioner's; and (6) that actually a
complaint has been filed by the petitioner against respondent for unfair competition in the
Court of First Instance of Manila asking for damages and for the issuance of a writ of
injunction against respondent enjoining the latter for continuing with the use of said mark.

The Court of First Instance of Manila rendered decision in the unfair competition case
perpetually enjoining respondent from using the name "SELECTA" as a trade-mark on the
goods manufactured and/or sold by it.

The Director of Patents, rendered decision dismissing petitioner's opposition and stating that
the registration of the trade-mark "SELECTA" in favor of applicant Selecta Biscuits Company,
Inc. will not cause confusion or mistake nor will deceive the purchasers as to the cause
damage to petitioner. Hence, petitioner interposed the present petition for review.

Issue: WON petitioner’s mark has acquired secondary meaning in its favor.

It appears that Ramon Arce, predecessor-in-interest of petitioner, started his milk business as
early as 1933. He sold his milk products in bottles covered with caps on which the words
'SELECTA FRESH MILK' were inscribed. Expanding his business, he established a store at
Lepanto Street, City of Manila, where he sold, in addition to his products, ice cream,
sandwiches and other food products, placing right in front of his establishment a signboard
with the name 'SELECTA' inscribed thereon. Special containers made of tin cans with the word
'SELECTA' written on their covers were used for his products. Bottle with the same word
embossed on their sides were used for his milk products. The sandwiches he sold and
distributed were wrapped in carton boxes with covers bearing the same name. He used several
cars and trucks for delivery purposes on the sides of which were written the same word. As
new products were produced for sale, the same were placed in containers with the same name
written on their covers. After the war, he added to his business such items as cakes, bread,
cookies, pastries, and assorted bakery products. Then his business was acquired by petitioner,
a co-partnership organized by his sons, the purposes of which are "to conduct a first class
restaurant business; to engage in the manufacture and sale of ice cream, milk, cakes and other
products; and to carry on such other legitimate business as may produce profit."

The foregoing unmistakably show that petitioner, through its predecessor-in-interest, had
made use of the word "SELECTA" not only as a trade-name indicative of the location of the
restaurant where it manufactures and sells its products, but as trade-mark is used.

Verily, the word 'SELECTA' has been chosen by petitioner and has been inscribed on all its
products to serve not only as a sign or symbol that may indicate that they are manufactured
and sold by it but as a mark of authenticity that may distinguish them from the products
manufactured and sold by other merchants or businessmen. The Director of Patents, therefore,
erred in holding that petitioner made use of that word merely as a trade-name and not as a
trade-mark within the meaning of the law.1

The word 'SELECTA', it is true, may be an ordinary or common word in the sense that may be
used or employed by any one in promoting his business or enterprise, but 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, it may acquire a secondary meaning as to be
exclusively associated with its products and business.2 In this sense, its used by another may
lead to confusion in trade and cause damage to its business. And this is the situation of
petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its
protection and guarantees its used to the exclusion of all others a (G. & C. Merriam Co. v.
Saalfield, 198 F. 369, 373). And it is also in the sense that the law postulates that "The
ownership or possession of a trade-mark, . . . shall be recognized and protected in the same
manner and to the same extent, as are other property rights known to the law," thereby giving
to any person entitled to the exclusive use of such trade-mark the right to recover damages in a
civil action from any person who may have sold goods of similar kind bearing such trade-mark
(Sections 2-A and 23, Republic Act No. 166, as amended).

The term 'SELECTA' may be placed at par with the words "Ang Tibay" which this Court has
considered not merely as a descriptive term within the meaning of the Trade-mark Law but as
a fanciful or coined phrase, or a trade-mark. In that case, this Court found that respondent
has constantly used the term "Ang Tibay" , both as a trade-mark and a trade-name, in the
manufacture and sale of slippers, shoes and indoor baseballs for twenty-two years before
petitioner registered it as a trade-name for pants and shirts so that it has performed during
that period the function of a trade-mark to point distinctively, or by its own meaning or by
association, to the origin or ownership of the wares to which it applies.

Qualitex Co. vs. Jacobson Products Co.

Facts:

Qualitex Company (Petitioner) uses a special shade of green-gold for press pads that it sells to
dry cleaning firms. Jacobson Products (Respondent) began to use the same color. Petitioner
registered the color as a trademark and then added a trademark infringement count to an
unfair competition claim in a lawsuit it had already filed against Petitioner for use of the color.
The Lanham Act gives a seller or producer the exclusive right to register a trademark and to
prevent competitors from using that trademark.

Issue: WON a color can be considered as a trademark?

Held:

The language of the Act and the basic underlying principles of trademark law seem to include
color in the realm of what can qualify as a trademark.

A color is also capable of satisfying the requirement that a person use or intend to use the
mark to identify and distinguish the goods. Over time, customers may come to treat a
particular color as signifying a brand to the extent that it develops a secondary meaning.

There is no objection to the use of color alone as a trademark, when that color has attained a
secondary meaning and therefore identifies and distinguishes a particular brand. It is the
source-distinguishing ability of a mark, and not its status as a color, that permits it to provide
a financial gain to a producer and to provide a distinguishing feature for customers.

There is no objection to the use of color as a mark under the functionality doctrine of
trademark law. This doctrine prevents trademark law from inhibiting legitimate competition by
allowing a producer to control a useful product feature. A patent may be given for a limited
time over new designs or functions, but after it expires, competitors are free to use the
innovation. A product feature is functional if exclusive use of the feature would put competitors
at a significant non-reputation-related disadvantage. Sometimes color does not play an
essential role in the product’s use or purpose and does not affect cost or quality, so the
doctrine of functionality does not create an absolute bar to the use of color alone as a mark.

So, color can sometimes meet the basic requirements for use as a trademark. It can be a
symbol that distinguishes a company’s goods and identifies their source, without serving any
other significant function.

When a color serves as a trademark, other colors will be available for similar use by
competitors. If colors become scarce, the functionality doctrine is available to prevent
problems.

PHILIPPINE NUT INDUSTRY, INC., vs. STANDARD BRANDS INCORPORATED 

Facts:
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.

Standard Brands a foreign corporation, filed with the Director of Patents 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 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.

Philippine Nut filed invoke that its registered label is not confusingly similar to that of
Standard Brands.

Director of Patents rendered a ddecision giving due course to Standard Brand's petition and
ordering the cancellation of Philippine Nut's Certificate of Registration. It 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.

Issue:

1. WON 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. WON the doctrine of secondary meaning is applicable

Held:

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.". 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.

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."

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.

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.

II.

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.

SEHWANI, INCORPORATED vs. IN-N-OUT BURGER, INC., 

Facts:

IN-N-OUT Burger, Inc., a foreign corporation organized under the laws of California, U.S.A.,
and not doing business in the Philippines, filed before the Bureau of Legal Affairs of the IPO, an
administrative complaint against petitioners Sehwani, Inc. and Benita's Frites, Inc. for violation
of intellectual property rights. It alleged that it is the owner of the tradename "IN-N-OUT" and
trademarks "IN-N-OUT," "IN-N-OUT Burger & Arrow Design" and "IN-N-OUT Burger Logo,"
which are used in its business since 1948 up to the present. These tradename and trademarks
were registered in the United States as well as in other parts of the world.

Respondent applied with the IPO for the registration of its trademark "IN-N-OUT Burger &
Arrow Design" and servicemark "IN-N-OUT." In the course of its application, respondent
discovered that petitioner Sehwani, Inc. had obtained Trademark Registration No. 56666 for
the mark "IN N OUT" without its authority.

Petitioners alleged that respondent lack the legal capacity to sue because it was not doing
business in the Philippines and that it has no cause of action because its mark is not
registered or used in the Philippines. Petitioner Sehwani, Inc. also claimed that as the
registered owner of the "IN-N-OUT" mark, it enjoys the presumption that the same was validly
acquired and that it has the exclusive right to use the mark.

Bureau Director Estrellita Beltran-Abelardo rendered a decision finding that respondent has
the legal capacity to sue and that it is the owner of the internationally well-known trademarks;
however, she held that petitioners are not guilty of unfair competition.

Office of the Director General rendered an order dismissing petitioners' appeal for being filed
out of time.

Court of Appeals dismissed the appeal for lack of merit. It held that the right to appeal is not a
natural right or a part of due process, but a procedural remedy of statutory origin, hence, its
requirements must be strictly complied with.

Issues:

1. WON respondent has the legal capacity to sue for the protection of its trademarks

2.  WON respondent's trademarks are considered "well-known" is factual in nature

Held:
I.

Contrary to petitioners' argument, respondent has the legal capacity to sue for the protection of
its trademarks, albeit it is not doing business in the Philippines. Section 160 in relation to
Section 3 of R.A. No. 8293, provides:

SECTION 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement
Action. - Any foreign national or juridical person who meets the requirements of Section 3 of
this Act and does not engage in business in the Philippines may bring a civil or administrative
action hereunder for opposition, cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it is licensed to do business in the
Philippines under existing laws.

Article 8

A tradename shall be protected in all countries of the Union without the obligation of filing or
registration whether or not it forms part of a trademark.

Article 6 which governs the protection of well-known trademarks, is a self-executing provision

and does not require legislative enactment to give it effect in the member country. It may be
applied directly by the tribunals and officials of each member country by the mere publication
or proclamation of the Convention, after its ratification according to the public law of each state
and the order for its execution. The essential requirement under this 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.

II.

We are inclined to favor the declaration of the mark "IN-N-OUT" as an internationally well-
known mark on the basis of "registrations in various countries around the world and its
comprehensive advertisements therein."

As shown by the records of the instant case, Complainant submitted evidence consisting of
articles about "IN-N-OUT Burger" appearing in magazines, newspapers and print-out of what
appears to be printed representations of its internet website (www.innout.com) (Exhibits "CCC"
to "QQQ"), as well as object evidence consisting of videotapes of famous celebrities mentioning
IN-N-OUT burgers in the course of their interviews (Exhibits "EEEE" and "FFFF") showing a
tremendous following among celebrities.

The quality image and reputation acquired by the complainant's IN-N-OUT mark is
unmistakable. With this, complainant's mark have met other criteria set in the Implementing
Rules of Republic Act 8293, namely, 'a' and 'd' of Rule 102, to wit:

"Rule 102:

(a) the duration, extent and geographical area of any use of the mark, in particular, the
duration, extent and geographical area of any promotion of the mark, including publicity and
the presentation at fairs or exhibitions, of the goods and/or services to which the mark applies;
 xxx

(d) the quality image or reputation acquired by the mark"

Hence, on the basis of evidence presented consisting of worldwide registration of mark "IN-N-
OUT" almost all of which were issued earlier than the respondent's date of filing of its
application and the subsequent registration of the mark "IN-N-OUT" in this Office, as well as
the advertisements therein by the complainant, this Office hereby affirms its earlier declaration
that indeed, the mark "IN-N-OUT BURGER LOGO" is an internally well-known mark. 29

We find the foregoing findings and conclusions of Director Beltran-Abelardo fully substantiated
by the evidence on record and in accord with law.

The fact that respondent's marks are neither registered nor used in the Philippines is of no
moment. The scope of protection initially afforded by Article 6 bis of the Paris Convention has
been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of
Well-Known Marks, wherein the World Intellectual Property Organization (WIPO) General
Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known
mark should be protected in a country even if the mark is neither registered nor used in that
country. Part I, Article 2(3) thereof provides:

(3) [Factors Which Shall Not Be Required] (a) A Member State shall not require, as a condition
for determining whether a mark is a well-known mark:

(i) that the mark has been used in, or that the mark has been registered or that an application
for registration of the mark has been filed in or in respect of, the Member State;

(ii) that the mark is well known in, or that the mark has been registered or that an application
for registration of the mark has been filed in or in respect of, any jurisdiction other than the
Member State; or

(iii) that the mark is well known by the public at large in the Member State. (Underscoring
supplied)cralawlibrary

Moreover, petitioners' claim that no ground exists for the cancellation of their registration lacks
merit. Section 151(b) of RA 8293 provides:

SECTION 151. Cancellation. - 151.1. A petition to cancel a registration of a mark under this
Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will
be damaged by the registration of a mark under this Act as follows:

xxx

(b) At any time, if the registered mark becomes the generic name for the goods or services, or a
portion thereof, for which it is registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being
used by, or with the permission of, the registrant so as to misrepresent the source of the goods
or services on or in connection with which the mark is used. x x x.ςηαñrοblεš  Î½Î¹r†υ
αl  lαω  lιbrαrÿ

The evidence on record shows that not only did the petitioners use the IN-N-OUT Burger
trademark for the name of their restaurant, but they also used identical or confusingly similar
mark for their hamburger wrappers and french-fries receptacles, thereby effectively
misrepresenting the source of the goods and services.