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    Coffee Partners Vs San Francisco Coffee

    Uploaded by

    Crisbon Apalis
    (1) Coffee Partners entered into a franchise agreement to operate coffee shops using the trademark "San Francisco Coffee" while the respondent, San Francisco Coffee & Roastery, is a local corporation that sells coffee under the registered business name "San Francisco Coffee & Roastery". (2) The respondent filed an infringement complaint against the petitioner alleging confusion due to their similar names in the coffee selling business. (3) The court ruled that the petitioner's trademark infringed the respondent's unregistered trade name as their use of similar names in the same coffee business would likely confuse the public as to the source and origin of the goods.

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    © All Rights Reserved
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    Coffee Partners Vs San Francisco Coffee

    Uploaded by

    Crisbon Apalis
    31 views2 pages
    (1) Coffee Partners entered into a franchise agreement to operate coffee shops using the trademark "San Francisco Coffee" while the respondent, San Francisco Coffee & Roastery, is a local corporation that sells coffee under the registered business name "San Francisco Coffee & Roastery". (2) The respondent filed an infringement complaint against the petitioner alleging confusion due to their similar names in the coffee selling business. (3) The court ruled that the petitioner's trademark infringed the respondent's unregistered trade name as their use of similar names in the same coffee business would likely confuse the public as to the source and origin of the goods.

    Original Title

    13. Coffee Partners vs San Francisco Coffee

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    (1) Coffee Partners entered into a franchise agreement to operate coffee shops using the trademark "San Francisco Coffee" while the respondent, San Francisco Coffee & Roastery, is a local corporation that sells coffee under the registered business name "San Francisco Coffee & Roastery". (2) The respondent filed an infringement complaint against the petitioner alleging confusion due to their similar names in the coffee selling business. (3) The court ruled that the petitioner's trademark infringed the respondent's unregistered trade name as their use of similar names in the same coffee business would likely confuse the public as to the source and origin of the goods.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    31 views2 pages

    Coffee Partners Vs San Francisco Coffee

    Uploaded by

    Crisbon Apalis
    (1) Coffee Partners entered into a franchise agreement to operate coffee shops using the trademark "San Francisco Coffee" while the respondent, San Francisco Coffee & Roastery, is a local corporation that sells coffee under the registered business name "San Francisco Coffee & Roastery". (2) The respondent filed an infringement complaint against the petitioner alleging confusion due to their similar names in the coffee selling business. (3) The court ruled that the petitioner's trademark infringed the respondent's unregistered trade name as their use of similar names in the same coffee business would likely confuse the public as to the source and origin of the goods.

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    © All Rights Reserved
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    Coffee Partners v.

    San Francisco Coffee &


    Roastery (G.R. No. 169504)
    Facts:

    Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd.
    to operate coffee shops in the country using the trademark ‘San Francisco Coffee.’
    Respondent on the other hand, is a local corporation engaged in the wholesale and
    retail sale of coffee and uses the business name ‘San Francisco Coffee & Roastery’
    registered with the DTI. Later, respondent filed an infringement and/or unfair
    competition complaint against petitioner alleging that the latter was about to open a
    coffee shop under the name ‘San Francisco Coffee’ causing confusion in the minds of
    the public as it bore a similar name and is engaged also in selling of coffee. Petitioner
    contended no infringement would arise because respondent’s tradename was not
    registered.

    Issue:

    Whether or not petitioner’s trademark would infringe respondent’s tradename.

    Ruling: YES.

    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.

    RA 8293, which took effect on 1 January 1998, has dispensed with the registration
    requirement. 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
    including any subsequent use of the trade name by a third party, whether as a trade
    name or a trademark likely to mislead the public.

    It is the likelihood of confusion that is the gravamen of infringement. Applying the


    dominancy test or the holistic test, petitioner’s “SAN FRANCISCO COFFEE” trademark
    is a clear infringement of respondent’s “SAN FRANCISCO COFFEE & ROASTERY,
    INC.” trade name. The descriptive words “SAN FRANCISCO COFFEE” are precisely
    the dominant features of respondent’s trade name. Petitioner and respondent are
    engaged in the same business of selling coffee, whether wholesale or retail. The
    likelihood of confusion is higher in cases where the business of one corporation is the
    same or substantially the same as that of another corporation. In this case, the
    consuming public will likely be confused as to the source of the coffee being sold at
    petitioner’s coffee shops.

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