Ana Ang vs. Toribio Teodoro
Ana Ang vs. Toribio Teodoro
Ana Ang vs. Toribio Teodoro
Toribio Teodoro
Doctrines –
1. Definition of secondary meaning: 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.
2. Test of whether goods are of the same class: 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.
Issues raised and held by Supreme Court –
(1) Whether the trademark “Ang Tibay” has acquired secondary meaning through
uninterrupted and exclusive use, and thus, cannot be used by the petitioner in
her products?
Yes. The Supreme Court held that the phrase “Ang Tibay” already acquired secondary
meaning, not just merely a descriptive term for the merchandise which respondent has
applied them as a trademark.
The Court explained that the phrase "Ang Tibay" is an exclamation denoting admiration
of strength or durability. For instance, one who tries hard but fails to break an object
exclaims "Ang tibay!" ("How strong!") It may also be used in a sentence thus, "Ang tibay
ng sapatos mo!" ("How durable your shoes are!") The phrase "ang tibay" is never used
adjectively to define or describe an object. One does not say, "ang tibay sapatos" or
"sapatos ang tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na
matibay."
Thus, the Court deduced that the said phrase is not a descriptive term within the
meaning of the Trademark Law but rather a fanciful or coined phrase which may
properly and legally be appropriated as a trademark or tradename.
The phrase "Ang Tibay," being neither geographic nor descriptive, was originally
capable of exclusive appropriation as a trademark.
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
Teodoro's long and exclusive use of said phrase with reference to his products and his
business, it has acquired a proprietary connotation.
(2) Whether the Court of Appeals was correct to decide that the goods or articles
on which the two trademarks are used are similar or belong to the same class?
Yes. The Supreme Court held that 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 that the first user made the second user’s goods”.
Held: Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Patentable inventions, on the other hand,
refer to any technical solution of a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable. Kho has no right to support her claim for the
exclusive use of the subject trade name and its container. The name and container of a beauty
cream product are proper subjects of a trademark inasmuch as the same falls squarely within its
definition. In order to be entitled to exclusively use the same in the sale of the beauty cream
product, the user must sufficiently prove that she registered or used it before anybody else did .
The petitioner’s copyright and patent registration of the name and container would not
guarantee her right to the exclusive use of the same for the reason that they are not appropriate
subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that she has a clear right over the said
name and container to the exclusion of others, not having proven that she has registered a
trademark thereto or used the same before anyone did.
The United States v. Kyburz, G.R. No. 9458, November 24, 1914
2. ID.; ID. — This ruling does not deny the right of the manufacturer or of other dealers
to sell watches of this kind in the Philippine Islands, provided they do not sell them
under the trade name adopted by Greilsammer Hermanos for watches advertised and
sold by them.-
3. ID.; ID.; LIABILITY OF MASTER FOR ACTS OF SERVANT. — The master is criminally
responsible for acts of his servants and employees in violation of the penal provisions of
Act No. 666 touching trade-marks, trade names, and unfair competition if he causes the
illegal act to be done, or requests, commands or permits it, or in any manner
authorizes it, or aids or abets the servant in its commission, whether he is present at
the time the unlawful act is committed or not.
4. ID.; DISTINCTION. — Trade names have been frequently confused with trade-marks,
and broadly speaking they include names which may constitute trade-marks; but
accurately speaking trade names are names which are used in trade to designate a
particular business of certain individuals considered somewhat as an entity, or the place
at which a business is located, or of a class of goods, but which are not technical trade-
marks either because not applied or affixed to goods sent into the market, or because
not capable of exclusive appropriation by anyone as trade-marks.
5. ID.; UNFAIR COMPETITION. — Trade names are protected against use or imitation
upon the ground of unfair competition, and Act No. 666 protects manufacturer or
dealer, as well as the public, from unfair competition by the use of trade names upon
the principle that no person has the right to sell his own goods as those of another.
6. ID.; ID. — In other words the principle is that no one may, by imitation or any unfair
device, induce the public to believe that the goods he offers for sale are the goods of
another, and thereby appropriate to himself the value of the reputation which the other
has acquired for the products or merchandise manufactured or sold by him.
Inchausti & Company v. Song Fo & Company, v. Song Fo & Company, et.al., G.R. No.6623.
January 26, 1912
SYLLABUS:
1. TRADE-MARKS; CERTAIN SYMBOLS, STANDING ALONE, NOT ADMISSIBLE AS
MARKS. — As a rule a symbol which represents something in universal use by the
public generally, or by a particular class of the people, is not a proper subject of an
exclusive trade-mark.
Ruling: NO.
While there is similarity between the trademark or trade name “Wellington Department
Store,” no confusion or deception can possibly result or arise from such similarity
because the latter is a “department store,” while the former does purport to be so. The
name “Wellington” is admittedly the name of the trademark on the shirts, pants,
drawers, and other articles of wear for men, women and children, whereas the name
used by the defendant indicates not these manufactured articles or any similar
merchandise, but a department store. Neither can the public be said to be deceived into
the belief that the goods being sold in defendant’s store originate from the plaintiffs,
because the evidence shows that defendant’s store sells no shirts or wear bearing the
trademark “Wellington,” but other trademarks. Neither could such deception be by any
possibility produced because defendant’s store is situated on the Escolta, while
plaintiffs’ store or place of business is located in another business district far away from
the Escolta. The mere fact that two or more customers of the plaintiffs thought of the
probable identity of the products sold by one and the other is not sufficient proof of the
supposed confusion that the public has been led into by the use of the name adopted by
the defendants. As we have stated, appellant have not shown any well-established
reputation or goodwill previous to the establishment of appellees’ business, such that it
can be said that something was unfairly taken by the use of such reputation by the
appellees’ department store. We agree, therefore, with the trial court that plaintiffs-
appellants have not been able to show the existence of a cause of action for unfair
competition against the defendants-appellees.
THE SUPREME COURT RULED IN FAVOR OF THE DEFENDANTS AND DECLARED THERE WAS NO
INFRINGEMENT.
FURTHERMORE, THE NAME “WELLINGTON” IS ADMITTEDLY THE NAME OF THE TRADEMARK ON THE
SHIRTS, PANTS, DRAWERS, AND OTHER ARTICLES OF WEAR FOR MEN, WOMEN AND CHILDREN,
WHEREAS THE NAME USED BY THE DEFENDANT INDICATES NOT THESE MANUFACTURED ARTICLES OR
ANY SIMILAR MERCHANDISE, BUT A DEPARTMENT STORE.
Q: CAN THE PUBLIC BE SAID TO BE DECEIVED INTO THE BELIEF THAT THE GOODS BEING SOLD
IN DEFENDANT’S STORE ORIGINATE FROM THE PLAINTIFFS?
A: NO BECAUSE THE EVIDENCE SHOWS THAT DEFENDANT’S STORE SELLS NO SHIRTS OR WEAR BEARING
THE TRADEMARK “WELLINGTON,” BUT OTHER TRADEMARKS.
Arce Sons and Company v. Selecta Biscuits Company, GR No. L-14761, January 28, 1961
Issue: Whether or not petitioner’s mark has acquired secondary meaning in its favor.
Ruling: YES.
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. In this sense, its use 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 use to the exclusion of all others.
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. And holding that respondent was entitled to
protection in the use of that trade-mark, this Court made the following comment:
Even if ‘Ang Tibay’, therefore, were not capable of exclusive appropriation as a trade-mark, the
application of the doctrine of secondary meaning could nevertheless be fully sustained
because, in any event, by respondent’s long and exclusive appropriation with reference to an
article on the market, because geographically or otherwise descriptive, might nevertheless have
been used so long and 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
article was his product.” (Ang v. Teodoro, supra.)
The rationale in the Ang Tibay case applies on all fours to the case of petitioner.
Romero v. Maiden Form Brassiere, GR No. L-18289, March 31, 1964 (En Banc)
SYLLABUS
1. TRADEMARKS; REGISTRABILITY; "ADAGIO" AS A MUSICAL TERM NOT A
COMMON DESCRIPTIVE NAME FOR BRASSIERES. — The trademark "Adagio" is a
musical term, which means slowly or in an easy manner, and when applied to
brassieres is used in an arbitrary (fanciful) sense, not being a common descriptive
name of a particular style of brassieres, and is therefore registrable.
3. ID.; ID.; USING TRADEMARK FOR ONE TYPE OF THE PRODUCT DOES NOT
AFFECT ITS VALIDITY AS A TRADEMARK. — Where a product is usually of different
types or styles and the manufacturer has used different trademarks for every type
as shown by its labels, the mere fact that said manufacturer uses a trademark like
"Adagio", for one type or style, does not affect the validity of such word as a
trademark.
Ruling:
IN VIEW OF ALL THE FOREGOING, we are of the opinion and so hold, that
respondent Director of Patents did not err in dismissing the present petition for
cancellation of the registered trademark of Appellee Company, and the decision
appealed from is therefore hereby affirmed, with costs against the appellant. So
ordered.
ABI is likewise not guilty of unfair competition for unfair competition is the employment of
deception or any other means contrary to good faith by which a person shall pass off the goods
manufactured by him for those of another who has already established goodwill for his similar
goods. The universal test for this is whether the public is likely to be deceived. Actual or
probable deception and confusion on the part of the customers by reason of defendant’s
practices must appear. However, this is unlikely to happen in the case at bar for consumers
generally order beer by brand. Also, the fact that ABI also uses amber-colored steinie bottles
cannot constitute unfair competition for ABI did not copy SMC’s bottle. SMC did not invent but
merely borrowed the steinie bottle from abroad. Likewise, amber is the most effective color in
preventing transmission of light thus providing maximum protection to beer. 320 ml is likewise
the standard prescribed under Metrication Circular No. 778. The fact that it is the first to use the
steinie bottle does not give SMC a vested right to use it to the exclusion of everyone else.
Nobody can acquire any exclusive right to market articles supplying the simple human needs in
containers or wrappers of the general form, size and character commonly and immediately used
in marketing such articles.
There is no confusing similarity between the competing beers therefore ABI neither
infringed SMC’s trademark nor did it commit unfair competition.
Issues:
(1) Whether or not the words ‘pale pilsen’ may be exclusively appropriated and used by
SMC;
(2) Whether or not there is confusing similarity between the two trademarks.
Ruling:
(1) NO. 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-registrable and not appropriable
by any beer manufacturer. The words “pale pilsen” may not be appropriated by SMC for
its exclusive use even if they are part of its registered trademark: SAN MIGUEL PALE
PILSEN. No one may appropriate generic or descriptive words. They belong to the
public domain.
(2) NO. There is hardly any dispute that the dominant feature of SMC’s trademark is the
name of the product: SAN MIGUEL PALE PILSEN, written in white Gothic letters with
elaborate serifs at the beginning and end of the letters “S” and “M” on an amber
background across the upper portion of the rectangular design. On the other hand, the
dominant feature of ABI’s trademark is the name: BEER PALE PILSEN, with the word
“Beer” written in large amber letters, larger than any of the letters found in the SMC
label.
The trial court perceptively observed that the word “BEER” does not appear in SMC’s
trademark, just as the words “SAN MIGUEL” do not appear in ABI’s trademark. Hence,
there is absolutely no similarity in the dominant features of both trademarks. Neither in
sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly
similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN
can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence
whatsoever was presented by SMC proving otherwise. There is no confusing similarity
between the competing beers for the name of one is “SAN MIGUEL” while the
competitor is plain “BEER” and the points of dissimilarity between the two outnumber
their points of similarity.
1ST ISSUE: W/N Respondent Corporation is liable for trademark infringement and unfair
competition.
Ruling: Yes
Section 22 of Republic Act No. 166, as amended, defines trademark infringement as follows:
Infringement, what constitutes. - Any person who [1] shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or advertising of any goods, business
or services on or in connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or services, or identity of
such business; or [2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade-
name and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services, shall be liable to a civil action by the
registrant for any or all of the remedies herein provided.
To establish trademark infringement, the following elements must be shown: (1) the validity of
plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer results in "likelihood of confusion." Of these, it is the
element of likelihood of confusion that is the gravamen of trademark infringement.
1st element:
The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, is
neither generic nor descriptive. Generic marks are commonly used as the name or description
of a kind of goods, such as "Lite" for beer. Descriptive marks, on the other hand, convey the
characteristics, functions, qualities or ingredients of a product to one who has never seen it or
does not know it exists, such as "Arthriticare" for arthritis medication. On the contrary, "Big Mac"
falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual
characteristics of the product it represents. As such, it is highly distinctive and thus valid.
2nd element:
Petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark. Prior
valid registrants of the said mark had already assigned his rights to McDonald's.
3rd element:
Section 22 covers two types of confusion arising from the use of similar or colorable imitation
marks, namely, confusion of goods (confusion in which the ordinarily prudent purchaser would
be induced to purchase one product in the belief that he was purchasing the other) and
confusion of business (though the goods of the parties are different, the defendant's product is
such as might reasonably be assumed to originate with the plaintiff, and the public would then
be deceived either into that belief or into the belief that there is some connection between the
plaintiff and defendant which, in fact, does not exist).
There is confusion of goods in this case since respondents used the "Big Mak" mark on the
same goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used.
There is also confusion of business due to Respondents' use of the "Big Mak" mark in the sale
of hamburgers, the same business that petitioners are engaged in, also results in confusion of
business. The registered trademark owner may use his mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations of the
products for specific segments of the market. The registered trademark owner enjoys protection
in product and market areas that are the normal potential expansion of his business.
Furthermore, In determining likelihood of confusion, the SC has relied on the dominancy test
(similarity of the prevalent features of the competing trademarks that might cause confusion)
over the holistic test (consideration of the entirety of the marks as applied to the products,
including the labels and packaging).
Applying the dominancy test, Respondents' use of the "Big Mak" mark results in likelihood of
confusion. 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.
Lastly, since Section 22 only requires the less stringent standard of "likelihood of confusion,"
Petitioners' failure to present proof of actual confusion does not negate their claim of trademark
infringement.
Ruling: Yes.
Section 29 ("Section 29") 73 of RA 166 defines unfair competition, thus:
Any person who will employ deception or any other means contrary to good faith by which he
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 such goodwill, or who shall commit any acts calculated
to produce said result, shall be guilty of unfair competition, and shall be subject to an action
therefor.
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.
In the case at bar, Respondents have applied on their plastic wrappers and bags almost the
same words that petitioners use on their styrofoam box. Further, Respondents' goods are
hamburgers which are also the goods of petitioners. Moreover, there is actually no notice to the
public that the "Big Mak" hamburgers are products of "L.C. Big Mak Burger, Inc." This clearly
shows respondents' intent to deceive the public.
ISSUES:
1. Whether or not Bayanihan was entitled to a Writ of Preliminary Injunction.
2. Whether or not Chan and BMG violated Bayanihan’s copyrights over the subject musical
compositions.
RULING:
1. NO, Bayanihan is not entitled to a Writ of Preliminary Injuntion.
The SC emphasised that a court should, as much as possible, avoid issuing the writ
which would effectively dispose of the main case without trial and enumerated the
requisites for its issuance, to wit:
1. There must be a right in esse or the existence of a right to be protected; and
2. The act against which the injunction is to be directed is a violation of such right.
Such a writ should only be granted if a party is clearly entitled thereto. Bayanihan, to be
entitled to the writ, is required to show that he has the ostensible right to the final relief
prayed for in its complaint. Here, the RTC QC did not find ample justifications for the
issuance of the writ prayed for by petitioner. Hence, the SC ruled that Bayanihan was
not entitled to the writ.
2. NO, Chan and BMG did not violate Bayanihan’s copyrights over the subject musical
compositions.
Unquestionably, Chan, being undeniably the composer and author of the lyrics of the
subject musical compositions, is protected by the mere fact alone that he is the creator
thereof, conformably with the Intellectual Property Code, Section 172.2 of which reads:
172.2. Works are protected by the sole fact of their creation, irrespective of their mode
or form of expression, as well as of their content, quality and purpose.
Section 172.2
R.A. No. 8293 otherwise known as the Intellectual Property Code of the Philippines
In addition, the two contracts entered into by Bayanihan and Chan, transferring the
latter’s rights over the songs to the former, expressly provided for the condition that in
the event that Bayanihan fails to use the compositions for a period of two (2) years from
the date of the contract, the copyright assigned to Bayanihan should revert back to the
author, Chan.
Since it appeared that the two (2) contracts expired on October 1, 1975 and March 11,
1978, respectively, there being neither an allegation, much less proof, that Bayanihan
ever made use of the compositions within the two-year period agreed upon by the
parties, the above mentioned provision applied and the copyright assigned to Bayanihan
hereby reverted back to the author, Chan.
Finally, evidence also showed that Chan revoked and terminated the contracts on July
30, 199, Bayanihan only wrote the letter to Chan and BMG on December 7, 1999, and
the Complaint was only filed on August 8, 2000. Clearly, Bayanihan no longer had any
right over the two musical compositions.
Thus, Chan and BMG’s act of reproducing and distributing the songs did not, in any
way, constitute copyright infringement as alleged by Bayanihan.
Petition was thus thereby DENIED.
ISSUE: The principal issues in this case are whether or not the playing and signing of musical
compositions which have been copyrighted under the provisions of the Copyright Law (Act
3134) inside the establishment of the defendant-appellee constitute a public performance for
profit within the meaning and contemplation of the Copyright Law of the Philippines
RULING: Playing of music in dine and dance establishment which was paid for by the public in
purchases of food and constitutes “performance for profit” within the Copyright Law.
Nevertheless, defendant cannot be held to have violated the Copyright Law because the
composers of the contested musical compositions are deemed to have waived their rights in
favor of the general public because they have failed to comply with the regulation requiring an
intellectual creation to be copyrighted within 30 days after publication.
Issue: Whether or not petitioner’s broadcasting rights and copyright are infringed.
Ruling: NO.
The Director-General of the IPO correctly found that PMSI is not engaged in
rebroadcasting and thus cannot be considered to have infringed ABS-CBN’s
broadcasting rights and copyright.
ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass
itself off as the origin or author of such programs. Insofar as Channels 2 and 23 are
concerned, PMSI merely retransmits the same in accordance with Memorandum
Circular 04-08-88. With regard to its premium channels, it buys the channels from
content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does not
perform the functions of a broadcasting organization; thus, it cannot be said that it is
engaged in rebroadcasting Channels 2 and 23.
ISSUE: WON GMA can stop VIVA from airing episodes 56 through 130 of The Weakest, Link, given
that its contract covers only 52 episodes.
RULING: YES
Petitioner contends that "by its very nature" a broadcast right is exclusive. It argues, thus:
It bears to stress that the airing of "The Weakest Link" is exclusive in character, meaning,
that since the contract to produce and air was first made and entered into with GMA by the
owners ECM Asia and ECM Europe, GMA has the prior and exclusive right to air "The
Weakest Link."
Certainly, Viva cannot air "The Weakest Link" by virtue of its July 17, 2001 contract while
GMA is airing the same program by virtue of its June 24, 2001 contract. In other words, in
recognizing the two contracts, the Court of Appeals cannot hold each contract as
simultaneously enforceable. This is absurd in fact and in law: in fact, because "The Weakest
Link" cannot be aired in Viva while it is being aired in GMA or vice versa; in law, because no
two contracts on the same object and subject matter can be enforced at the same time.
To be sure, the character of exclusivity is the main consideration behind contracts for the
development or airing of a program. In the television industry, the competition is to have an
exclusive contract to air a specific program and this exclusive character need not even be
expressly stated in the contract. It is written into the contract by the nature of the contract
itself and by tradition.
This alleged exclusivity is admittedly not expressly provided in GMA's contract. In fact, GMA was
given only 52 episodes whereas there were 130 episodes, which would seem to indicate that the
intent was to open the show to another player.
In any case, the Court cannot at this stage posit exclusivity in the absence of evidence thereon such
as expert witnesses attesting to the practice in the industry and other relevant factors such as
technical reasons.
This is all the more so in light of the fact that petitioner's contract was verbal and no written
memorandum of its terms was presented.
For this reason, the Court is constrained to sustain the CA's ruling that petitioner has failed to
establish its right to a writ of preliminary injunction.
COFFEE PARTNERS, INC., Petitioner, vs. SAN FRANCISCO COFFEE &
ROASTERY, INC., Respondent.
ISSUES:
1. Whether or not respondent abandoned the use of his trade name?
2. Whether petitioner’s use of the trademark “SAN FRANCISCO COFFEE”
constitutes infringement of respondent’s trade name “SAN FRANCISCO
COFFEE & ROASTERY, INC.,” even if the trade name is not registered with
the Intellectual Property Office (IPO)?
HELD:
1. NO, There was no abandonment. BLA-IPO and the CA found that
respondent continued to make plans and do research on the retailing of coffee
and the establishment of coffee cart, which negates abandonment. Even though
they had stopped in selling coffee they continued to import and sell coffee
machines, which is one of the services which the use of the business name had
been registered.
2. 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.10 (Emphasis supplied)
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.
Sec. 22 of RA 166 required registration of a trade name for the institution of an
infringement suit but this was dispensed with when RA 8293 took effect. Sec. 5
of RA 8293 states:
SEC. 165.2 (a) notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected, even prior to
or without registration, against any unlawful act committed by third parties.
It is the likelihood of confusion that is the gravamen of infringement. And in order
to determine likelihood of confusion we can apply two tests which are:
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 occurs. Exact duplication or imitation is not required. 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 consumers.
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 marks
in order that the observer may draw his conclusion whether one is confusingly
similar to the other.
In applying either test, petitioner’s “SAN FRANCISCO COFFEE” trademark is a clear
infringement of respondents “SAN FRANCISCO COFFEE & ROASTERY, INC.” Trade
name. They are also engaged in the same business. The likelihood of confusion is
higher in cases where the business of one corporation is the same or substantially
the same of that of another.
Emerald Garment vs CA
Issue: WON the trademark “Stylistic Mr. Lee” tends to mislead or confuse the public and
constitutes an infringement of the trademark “Lee.”
Held: Negative for lack of adequate proof of actual use of its trademark in the Philippines prior
to Emeralds use of its own mark and for failure to establish confusing similarity between said
trademarks, HD Lee Co’s action for infringement must necessarily fail.
Ratio:
Emerald’s “Stylistic Mr. Lee” is not confusingly similar to private respondent’s "LEE”
trademark. Colorable imitation DOES NOT APPLY because:
1. Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word
“LEE” is prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial enough to
matter especially in the light of the following variables that must be factored in, among others:
a. Expensive and valuable items are normally bought only after deliberate, comparative and
analytical investigation; and
3. After a meticulous study of the records, the SC observes that the Director of Patents and the
Court of Appeals relied mainly on the registration certificates as proof of use by HD Lee Co of
the trademark “LEE” which are not sufficient.
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