ABS-CBN PUBLISHING, INC., PETITIONER, VS.

DIRECTOR OF THE
BUREAU OF TRADEMARKS
FACTS:

In 2004, the petitioner filed with the Intellectual Property Office of the Philippines (IPO) its
application for the registration of its trademark "METRO" (applicant mark) under class 16 of the Nice
classification, with specific reference to "magazines." It was assigned to Examiner Arlene M. Icban
(Examiner Icban), who, after a judicious examination of the application, refused the applicant mark's
registration because the applicant mark is identical with three other cited marks, and is therefore
unregistrable according to Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC).
The petitioner appealed the assessment of Examiner Icban before the Director of the Bureau of
Trademarks of the IPO, who eventually affirmed Examiner Icban's findings. The decision averred that
the applicant and cited marks were indeed confusingly similar, so much so that there may not only
be a confusion as to the goods but also a confusion as to the source or origin of the goods. The
petitioner appealed to the ODG of the IPO. The ODG upheld the decision of Examiner Icban's
assessment and the Bureau Director's decision.

ISSUE:

Whether or not the ODG was correct in refusing to register the applicant mark for being
identical and confusingly similar with the cited marks already registered with the IPO?

HELD:

According to Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC), a
mark cannot be registered if it is "identical with a registered mark belonging to a different proprietor
or a mark with an earlier filing or priority date," in respect of the following: (i) the same goods or
services, or (ii) closely related goods or services, or (iii) if it nearly resembles such a mark as to be
likely to deceive or cause confusion. To determine whether a mark is to be considered as "identical"
or that which is confusingly similar with that of another, the Court has developed two (2) tests: the
dominancy and holistic tests. While the Court has time and again ruled that the application of the
tests is on a case to case basis, upon the passage of the IPC, the trend has been to veer away from
the usage of the holistic test and to focus more on the usage of the dominancy test. As stated by the
Court in the case of McDonald's Corporation vs. L.C. Big Mak Burger, Inc., the "test of dominancy is
now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines
infringement as the 'colorable imitation of a registered mark x x x or a dominant feature thereof.’
This is rightly so because Sec. 155.1 provides that:

SECTION 155. Remedies; Infringement. - Any person who shall, without the consent
of the owner of the registered mark: 155.1. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or the same container or a dominant
feature thereof in connection with the sale, offering for sale, distribution, advertising of any
goods or services including other preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive; or x x x. (Emphasis and underscoring supplied)

In other words, in committing the infringing act, the infringer merely introduces negligible
changes in an already registered mark, and then banks on these slight differences to state that there
was no identity or confusing similarity, which would result in no infringement. This kind of act, which
leads to confusion in the eyes of the public, is exactly the evil that the dominancy test refuses to
accept. The small deviations from a registered mark are insufficient to remove the applicant mark
from the ambit of infringement. Section 3, Rule 18 of the Rules of Procedure for Intellectual Property
Cases provides for the legal presumption that there is likelihood of confusion if an identical mark is
used for identical goods. The provision states: SEC. 3. Presumption of likelihood of confusion. -
Likelihood of confusion shall be presumed in case an identical sign or mark is used for identical
goods or services. In the present case, the applicant mark is classified under "magazines," which is
found in class 16 of the Nice classification.

A perusal of the records would reveal, however, that the cited marks "METRO" (word) and
"METRO" (logo) are also both classified under magazines. In fact, Examiner Icban found that the
cited marks were used on the following classification of goods: Paper, cardboard and goods made
from these materials, not included in other classes; newspapers, magazines, printed matter and
other printed publications; bookbinding material; photographs; stationery; adhesives for stationery
or household purposes; artists materials; paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except apparatus); plastics materials for packaging
(not included in other classes); playing cards; printers types; printing blocks. (Emphasis and
underscoring supplied)

Thus, the presumption arises. Even then, it must be emphasized that absolute certainty of confusion
or even actual confusion is not required to refuse registration. Indeed, it is the mere likelihood of
confusion that provides the impetus to accord protection to trademarks already registered with the
IPO. The Court cannot emphasize enough that the cited marks "METRO" (word) and "METRO" (logo)
are identical with the registrant mark "METRO" both in spelling and in sound. In fact, it is the same
exact word. Considering that both marks are used in goods which are classified as magazines, it
requires no stretch of imagination that a likelihood of confusion may occur.

Again, the Court points to the finding of Examiner Icban which was reviewed and upheld twice: one
by the Director of the Bureau of Trademarks and another by the Director General of the IPO. As a
final point, the petitioner, in the pleadings submitted, manifested that the cited marks are no longer
valid. It said that: (1) the cited mark "METRO" (logo) was removed from the IPO register for non-use,
citing the IPO online database, (2) the cited mark "INQUIRER METRO," while valid according to the
IPO online database, was cancelled according to a certain certification from the Bureau of
Trademarks of the IPO; and (3) the cited mark "METRO" (word) already expired on June 26, 2016
according to yet another certification from the IPO.

Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., G.R. No. 228165, 09 February 2021

Emphasizing the adoption of the Dominancy Test and the abandonment of the Holistic Test in
evaluating trademark resemblance, the Supreme Court, voting unanimously, rejected the “kolin”
trademark application filed by Kolin Philippines International, Inc. (KPII) for its television and DVD
players.

In a 38-page decision penned by Justice Alfredo Benjamin S. Caguioa, the Court En Banc granted the
Petition for Review on Certiorari under Rule 45 of Kolin Electronics Co., Inc. (KECI) to reverse and set
aside the April 29, 2016 decision and November 4, 2016 resolution of the Court of Appeals (CA) that
ruled in KPII‟s favor to register its “kolin” mark.
The SC reinstated and affirmed the decision of the Intellectual Property Office- Director General
(IPO-DG) which had ruled in favor of KECI, which had already been declared as the owner of the
“KOLIN“mark under the Trademark Law.

The SC summarized its discussion, to wit: (1) there is resemblance between KECI‟s “KOLIN“ and
KPII’s “kolin” marks; (2) the goods covered by KECI’s “KOLIN“ are related to the goods covered by
KPII’s “kolin”; (3) there is evidence of actual confusion between the two marks; (4) the goods
covered by KPII’s “kolin” fall within the normal potential expansion of business of KECI; (5)
sophistication of buyers is not enough to eliminate confusion; (6) KPII’s adoption of KECI’s coined
and fanciful mark would greatly contribute to likelihood of confusion; and (7) KPII applied for “kolin”
in bad faith.

“Thus, KPII’s application for kolin should be denied because it would cause likelihood of confusion
and KECI’s rights would be damaged,” the Court held. It further held that “[t]he existence of
likelihood of confusion is already considered as damage that would be sufficient to sustain the
opposition and rejection of KPII’s trademark application.”

“More than that, however, the Court is likewise cognizant that, by granting this registration, KPII
would acquire exclusive rights over the stylized version of KOLIN (kolin) for a range of
goods/services. Owing to the peculiar circumstances of this case, this will effectively amount to a
curtailment of KECI’s right to freely use and enforce the KOLIN word mark, or any stylized version
thereof, for its own range of goods/services, especially against KPII, regardless of the existence of
actual confusion. Thus, based on Section 122 vis-à-vis Section 236 of the IP Code, the Court cannot
give due course to KPII’s trademark application for „kolin‟,” held the Court.

The SC disagreed with the CA which had earlier ruled that res judicata (a latin term which refers to a
case or controversy that is already decided with finality) was applicable in the present case. The CA
relied on the 2015 SC jurisprudence in G.R. No. 209843, Taiwan Kolin Corporation, Ltd. (TKC) v. Kolin
Electronics Co., Inc. (KECI) or the Taiwan Kolin case, where the Court gave due course to the TKC’s
trademark application for “KOLIN.”

The SC stressed the Taiwan Kolin case only ruled that TKC’s trademark application for “KOLIN”
should be given due course and that what was involved in the present case is a new trademark
application by KPII which means that it is going through an entirely new process of determining
registrability.

“Because this involves a new trademark application and there are new issues arising here which
were not decided in the Taiwan Kolin case, the principle of res judicata in the concept of
conclusiveness of judgment does not apply,” it stressed.

The ponencia noted that Justice Estela M. Perlas-Bernabe, who wrote a separate concurring opinion,
raised a compelling and well-reasoned point on why the principle of conclusiveness of judgment
does not apply in the present case. She opined that the Court‟s Third Division in the Taiwan Kolin
case could have only allowed the registration of TKC’s KOLIN as a mark with a specific stylization, and
not a word mark.

“Indeed, a perusal of the marks involved in the Taiwan Kolin case would confirm that TKC sought to
protect a specific style of lettering in its trademark application, thereby precluding the possibility
that the registration granted in the Taiwan Kolin case belongs in the category of word mark,” the
Court held.
Aside from Justice Bernabe, then Chief Justice Diosdado M. Peralta and Justices Marvic M.V.F.
Leonen and Mario V. Lopez also wrote separate concurring opinions.

The Court noted that the current state of jurisprudence in deciding the resemblance of marks is
unclear. But between the Dominancy Test and the Holistic or Totality Test, only the former has been
incorporated in the Intellectual Property Code (IP Code), which was discussed in 2004 jurisprudence
in McDonald’s Corporation v. L.C. Big Mak Burger, Inc. The Dominancy Test considers the dominant
features in the competing marks in determining whether they are confusingly similar. Under the said
test, courts give greater weight to the similarity of the appearance of the product arising from the
adoption of the dominant features of the registered mark, disregarding minor differences. The test
of dominancy is also now explicitly incorporated into law in Section 155.1 of the IP Code.

“Considering the adoption of the Dominancy Test and the abandonment of the Holistic Test, as
confirmed by the provisions of the IP Code and the legislative deliberations, the Court hereby makes
it crystal clear that the use of Holistic Test in determining resemblance of marks has been
abandoned,” the Court said.

Applying the Dominancy Test, KPII’s kolin mark resembles KECI’s KOLIN mark because the word
“KOLIN” is the prevalent feature of both marks. Phonetically or aurally, the marks are exactly the
same, held that Court. It added that the Taiwan Kolin case was inapplicable because it used the
Holistic Test in evaluating trademark resemblance.

The SC noted the fact that KPII’s trademark application possesses special characteristic (referring to
the italicized orange letter „i‟) not present in KECI’s “KOLIN“ word mark makes no difference in
terms of appearance, sound, connotation, or overall impression because the “KOLIN” word itself is
the subject of KECI‟s registration.

The Court also abandoned “the use of product or service classification as a factor in determining
relatedness or non-relatedness” of goods or services.

KECI is the predecessor company of Kolin Electronics Industrial Supply (KEIS), owned by a certain
Miguel Tan. In 1993, KEIS filed with the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT), now the Intellectual Property Office, an application for registration of Trademark
Application for KOLIN covering products under

Class 9 – automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power
supply, step-down transformer, and PA amplifier AC-DC. In a Deed of Assignment of Assets in 1995,
Miguel Tan assigned in KECI’s favor all the assets and merchandise stocks of KEIS, including its
pending application for registration of the KOLIN mark. The trademark has been continuously used in
various products under the said classification, and the products are being offered for sale at KECI’s
business establishments.

In 1996, TKC filed with BPTTT a trademark application for KOLIN initially covering the following goods
– color television, refrigerator, window-type air conditioner, split- type air conditioner, electric fan,
and water dispenser. During the pendency of its application, TKC filed a verified Notice of Opposition
in 1998 against KECI’s trademark application for KOLIN. TKC claimed that it is the owner of Taiwan
registrations for KOLIN and KOLIN SOLID SERIES and that it has a pending application for KOLIN, thus
the grant of the KOLIN application would cause TKC grave and irreparable damage to its business
reputation and goodwill because KOLIN is identical, if not confusingly similar, to TKC’s marks.

In 2002, the IPO Bureau of Legal Affairs (IPO-BLA) rendered a decision denying TKC’s opposition and
giving due course to KECI’s trademark application for KOLIN. It concluded that KECI “is the prior
adopter and user of the mark „KOLIN‟ in the Philippines, having been able to prove the date of first
use of its mark in 1989, ahead of TKC’s use in the Philippines in 1996.

TKC appealed the decision to the IPO-Director General, which sustained the ruling of the IPO-BLA.
The IPO eventually issued a Certificate of Registration for KOLIN in favor of KECI.

Subsequently, TKC filed a petition for review with the CA. In 2006, the CA issued a Decision against
TKC and in favor of KECI. The CA found as undisputed that KEIS, the predecessor-in-interest of KECI,
had been using the KOLIN mark in the country since 1989, prior to the filing of the trademark
application of KOLIN in 1993. By virtue of the KECI ownership case, KECI is the adjudicated owner of
the KOLIN mark under the Trademark Law as against TKC.

However, in another case that went up to the SC, the registration of another KOLIN mark not owned
by KECI was allowed. Known as the Taiwan Kolin case, the SC in its 2015 jurisprudence, gave due
course to TKC’s Trademark Application for KOLIN.

To recall, TKC filed a Trademark Application for KOLIN in 1996 before filing an opposition case
against KECI’s application for KOLIN. | via Supreme Court PIO

Kolin Electronics Co. Inc. v. Kolin Philippines International

Inc.
FACTS:

In this Kolin case, KPII filed a trademark application for the “kolin” mark covering televisions
and DVD players. KECI, a different entity, filed an opposition on the ground that it is the registered
owner of the subject mark; and if registered, KPII’s mark will cause confusion among the consumers.

KPII countered that KECI’s ownership over the “kolin” mark is limited only to goods such as
automatic voltage, regulator, stereo booster and the like. The Intellectual Property Office (IPO) sided
with KECI.

The Court of Appeals (CA), however, disagreed with the IPO.

Relying heavily on the earlier Taiwan Kolin case (G.R. No. 209843, 25 March 2015), wherein the SC
allowed KPII’s affiliated entity Taiwan Kolin Corporation Ltd. (TKC) to register the “kolin” mark, the
CA equally allowed KPII to have the “kolin” mark registered on the ground that the Taiwan Kolin case
amounted to res judicata.

ISSUE:

W/N KPII may register the “kolin” mark.

RULING:

The SC reversed the CA. The Court, through Justice Caguioa, noted that jurisprudence has
flip-flopped over the years between the Holistic and Dominancy Tests to determine similarity and
likelihood of confusion in trademarks. The Dominancy Test focuses on the similarity of the prevalent
features of the competing marks.
Meanwhile, the Holistic Test requires that the entirety of the marks in question be considered in
resolving confusing similarity. There was no hard and fast rule in determining which test should be
applied.

There are more Supreme Court decisions that applied the Dominancy Test.

Nevertheless, the Holistic Test was adopted in significant decisions, consistently, in fact, when it
comes to jeans, and notably, in the classic San Miguel Brewery v. Asia Brewery case involving the
trademark “BEER Pale Pilsen.” In fact, jurisprudence likewise abounds on the application of both
tests in resolving likelihood of confusion in the use of trademark.

In this 2021 Kolin case, the SC En Banc made it crystal clear that it is abandoning the Holistic Test in
determining the resemblance of similar marks.

The SC noted that only the Dominancy Test is incorporated in the Intellectual Property (IP) Code,
particularly Section 155.1 thereof which defines trademark infringement as the “colorable imitation
of a registered mark… or a dominant feature thereof (italics supplied).

” Citing legislative deliberations leading to the enactment of the IP Code, the Supreme Court
concluded that the exclusion of the Holistic Test was intentional and that the Dominancy Test should
be adopted to put an end to the debate, once and for all.

Thus, applying the Dominancy Test, the SC held that KPII’s “kolin” mark resembles KECI’s “KOLIN”
mark because the word “KOLIN” is the prevalent feature of both marks.

“Phonetically or aurally, the marks are exactly the same. Surely, the manner of pronouncing the
word ‘KOLIN’ does not change just because KPII’s mark is in lowercase and contains an italicized
orange letter ‘i.’ In terms of connotation and overall impression, there seems to be no difference
between the two marks,” said the ponencia.

KENSONIC, INC. vs. UNI-LINE MULTI-RESOURCES

FACTS:

On June 6, 2002, Uni-Line filed an application for the registration of the trademark SAKURA
for use on the following:

Class 07

Washing machines, high pressure washers, vacuum cleaners, floor polishers, blender, electric mixer,
electrical juicer

Class 09

Television sets, stereo components, DVD/VCD players, voltage regulators, portable generators,
switch breakers, fuse

Class 11

Refrigerators, air conditioners, oven toaster, turbo broiler, rice cooker, microwave oven, coffee
maker, sandwich/waffle maker, electric stove, electric fan, hot & cold water dispenser, airpot,
electric griller and electric hot pot
Kensonic opposed Uni-Line's application on the ground that the latter had prior use and registration
of the SAKURA mark since October 1994.

Decision of the Bureau of Legal Affairs (BLA)

The BLA Director cancelled Uni-Line's certificate of registration. It observed that the marks were
confusingly similar with each other; that the goods sought to be covered by the SAKURA registration
of Uni-Line were related to the goods of Kensonic under Class 09 goods (namely: amplifiers,
speakers, cassette disks, video cassette disks, car stereos, televisions, digital video disks, mini
components, tape decks, compact disk chargers, VHS and tape rewinders).

Hence, appeal to the Director General, IPO.

Decision of the Director General, IPO

Director General of the IPO ruled in favor of Uni-Line's registration of the SAKURA mark as to goods
classified as

Class 07 and Class 11, but denied its registration under class 09. The registration of products of Uni-
Line falling under

Class 07 and Class 11 should not be cancelled because the products were different from the goods
registered under

Class 09 in the name of Kensonic.

Hence, appeal to CA by both parties.

Judgment of the CA

The CA upheld Kensonic's ownership of the SAKURA mark based on its showing of its use of the mark
since 1994, but ruled that despite the identical marks of Kensonic and Uni-Line, Kensonic's goods
under Class 09 were different from or unrelated to Uni-Line's goods under Class 07 and Class 11. It
observed that the protection of the law regarding the SAKURA mark could only extend to television
sets, stereo components, DVD and VCD players but not to Uni-Line's voltage regulators, portable
generators, switch breakers and fuses due to such goods being unrelated to Kensonic's goods; that
Kensonic's registration only covered electronic audio-video products, not electrical home appliances;
and that the similarity of the marks would not confuse the public because the products were
different and unrelated Hence, Kensonic appeal to SC

ISSUES:

First Issue: Is the SAKURA mark capable of appropriation?

Second Issue: Are Kensonic's goods falling under Class 09 related to UniLine's goods falling
under Class 07 and Class 11?

Ruling:

First Issue: Yes. The SAKURA mark can be appropriated A word or a combination of words
which is merely descriptive of an article of trade, or of its composition, characteristics, or qualities,
cannot be appropriated and protected as a trademark to the exclusion of its use by others. Although
SAKURA refers to the Japanese flowering cherry and is, therefore, of a generic nature, such mark did
not identify Kensonic's goods. Kensonic's prior use of the mark “SAKURA” since 1994 made it the
owner of the mark, and its ownership cannot anymore be challenged.
 Second Issue: No. An examination of the foregoing factors reveals that the goods of Uni-Line
were not related to the goods of Kensonic by virtue of their differences in class, the descriptive
attributes, the purposes and the conditions of the goods.

MIGHTY CORP. vs. E&J GALLO

FACTS:

On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC (respondents)
sued MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. (petitioners) in the RTC-
Makati for trademark and trade name infringement and unfair competition, with a prayer for
damages and preliminary injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and
Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing confusion,
deception and mistake on the part of the purchasing public who had always associated Gallo and
Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo
cigarettes and Gallo Winery’s wine were totally unrelated products. To wit:

1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;

2. GALLO cigarettes and GALLO wines were sold through different channels of trade;

3. the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo
cigarette buyers were farmers, fishermen, laborers and other low-income workers;

4. that the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s
name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was
the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;

The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of
preliminary injunction. CA likewise dismissed respondent’s petition for review on certiorari.

After the trial on the merits, however, the Makati RTC held petitioners liable for committing
trademark infringement and unfair competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion
for reconsideration.

ISSUE/S:

Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the
reason alone that they were purportedly forms of vice.

RULING:

NO. Wines and cigarettes are not identical, similar, competing or related goods.

In resolving whether goods are related, several factors come into play:
·         the business (and its location) to which the goods belong

·         the class of product to which the good belong

·         the product’s quality, quantity, or size, including the nature of the package, wrapper or
container

·         the nature and cost of the articles

·         the descriptive properties, physical attributes or essential characteristics with reference to

their form, composition, texture or quality

·         the purpose of the goods

·         whether the article is bought for immediate consumption, that is, day-to-day household items

·         the field of manufacture

·         the conditions under which the article is usually purchased and

·         the articles of the trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in
some measure acquainted with an established design and desirous of purchasing the commodity
with which that design has been associated. The simulation, in order to be objectionable, must be as
appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with
the article that he seeks to purchase.

The petitioners are not liable for trademark infringement, unfair competition or damages.

Canon Kabushiki Kaisha v. CA

Facts:

Respondent NSR Rubber filed an application for registration of the mark CANON for sandals.
Petitioner Canon, a Japanese corporation, opposed alleging it will be damaged by the registration.
Petitioner presented evidence that it was the owner of the mark CANON in various countries and in
the Philippines for goods such as paints, chemical products, toner and dye stuff. BPTTT dismissed the
opposition and gave due course to respondent’s application. CA affirmed. Petitioner invokes Article 8
of the Paris Convention which affords protection to a tradename whether or not it forms part of a
trademark.

Issue:

Whether or not petitioner may be afforded protection of its trade name.

Ruling:

NO. The term “trademark” is defined by RA 166, the Trademark Law, as including “any word,
name, symbol, emblem, sign or device or any combination thereof adopted and used by a
manufacturer or merchant to identify his goods and distinguish them for those manufactured, sold
or dealt in by others.” Tradename is defined by the same law as including “individual names and
surnames, firm names, tradenames, devices or words used by manufacturers, industrialists,
merchants, agriculturists, and others to identify their business, vocations, or occupations; the names
or titles lawfully adopted and used by natural or juridical persons, unions, and any manufacturing,
industrial, commercial, agricultural or other organizations engaged in trade or commerce.” Simply
put, a trade name refers to the business and its goodwill; a trademark refers to the goods.

The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris
Convention, of which both the Philippines and Japan, the country of petitioner, are signatories, 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. We agree with public
respondents that the controlling doctrine with respect to the applicability of Article 8 of the Paris
Convention is that established in Kabushi Kaisha Isetan vs. IAC. As pointed out by the BPTTT:
“Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is no
automatic protection afforded an entity whose tradename is alleged to have been infringed through
the use of that name as a trademark by a local entity. To illustrate – if a taxicab or bus company in a
town in the United Kingdom or India happens to use the tradename “Rapid Transportation”, it does
not necessarily follow that “Rapid” can no longer be registered in Uganda, Fiji, or the Philippines.”

FABERGE INC., VS. IAC & CO BENG KAY

FACTS:

Petitioner Faberge manufactures and sells after-shave lotion, shaving cream, deodorant,
toilet soap, etc. under its registered trademark ‘BRUT’. On the other hand, respondent Co Beng Kay
manufactures and sells briefs under the trademark ‘BRUTE.’

Petitioner tried to oppose the registration by respondent of the trademark ‘BRUTE’ for being
confusingly similar with petitioner’s ‘BRUT’ but Director of Patents denied such opposition observing
that considering the overall appearance of both trademarks, there are glaring differences which
would unlikely cause a confusion among customers.

On appeal, the CA initially ruled in favor of petitioner stating that the products of the petitioner and
the respondent have the same outlet (e,g, ‘Men’s accessories’ in a department store). Thus, even if
the trademark ‘BRUTE’ was only applied for briefs, the similarity of the same with ‘BRUT’ would
likely cause confusion to the buying public.

On respondent’s motion for reconsideration, the CA reversed itself in favor of respondent relying on
the ESSO and PRC cases wherein the SC ruled that identical trademark can be used by different
manufacturers for products that are non-competing and unrelated. Hence, this appeal.

Petitioner argues that the ruling in Teodoro which was reiterated in Sta. Ana where the SC ruled that
a registration may be opposed if the junior user’s goods (Co Beng Kay’s in this case) are not remote
from any product that the senior user (Faberge) would be likely to make or sell. To bolster this
argument, petitioner presented an alleged application of the trademark ‘BRUT 33 Device’ for briefs.

ISSUE:

WON the respondent is permitted to use the trademark ‘BRUTE’ for briefs.
RULING:

YES. The provisions applicable to this case are the following:

            Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal register.

—

. . . The owner of trademark, trade-name or service-mark used to distinguish his goods, business or
services from the goods, business or services of others shall have right to register the same on the
principal register, unless it:

                                                            xxx xxx xxx

4(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name

registered in the Philippines or a mark or trade-name previously used in the Philippines by another
and not abandoned, as to be likely, when applied to or used in connection with the goods, business
or services of the applicant, to cause confusion or mistake or to deceive purchasers.

                                                            xxx xxx xxx

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.

It is not difficult to discern from the foregoing statutory enactments that private respondent may be
permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in marketing its own set of items which are limited to:
after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as
petitioner has not ventured in the production of briefs, an item which is not listed in its certificate of
registration, petitioner cannot and should not be allowed to feign that private respondent had
invaded petitioner's exclusive domain. To be sure, it is significant that petitioner failed to annex in its
Brief the so-called "eloquent proof that petitioner indeed intended to expand its mark "BRUT" to
other goods. Even then, a mere application by petitioner in this aspect does not suffice and may not
vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. In short,
paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by
petitioner, the certificate of registration issued by the Director of Patents can confer upon petitioner
the exclusive right to use its own symbol only to those goods specified in the certificate, subject to
any conditions and limitations stated therein.

Phil Refining v, Ng Sam

Facts:

The petitioner Philippine Refining Co. first used'Camia'  as trademark for its products in 1922.
In 1949, it caused the registration of the said trademark for its lard, butter, cooking oil, detergents,
polishing materials and soap products. In 1960, Ng Sam filed an application for 'Camia' for its ham
product (Class 47), alleging its first use in 1959. The petitioner opposed the said application but the
Patent Office allowed the registration of Ng Sam.
Issue:

Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of the
trademark 'Camia' on said goods would result to confusion as to their origin?

HELD:

NO. The businesses of the parties are non-competitive and the products are so unrelated
that the use of the same trademark will not give rise to confusion nor cause damage to the
petitioner. The right to a trademark is a limited one, hence, others may use the same mark on
unrelated goods if no confusion would arise.

A trademark is designed to identify the user, hence, it should be so distinctive and sufficiently
original so as to enable those who see it to recognize instantly its source or origin. A trademark must
be affirmative and definite, significant and distinctive and capable of indicating origin.

'Camia' as a trademark is far from being distinctive, It in itself does not identify the petitioner as the
manufacturer of producer of the goods upon which said mark is used. If a mark is so commonplace,
it is apparent that it can't identify a particular business and he who adopted it first cannot be injured
by any subsequent appropriation or imitation by others and the public will not be deceived.

Mere classification of the goods cannot serve as the decisive factor in the resolution of whether or
not the goods a related. Emphasis should be on the similarity of products involved and not on
arbitrary classification of general description of their properties or characteristics.

Hickok v CA
Facts:

Petitioner is a foreign corporation, and all its products are manufactures by Quality House
Inc. The latter pays royalty to the petitioner. Hickok registered the trademark 'Hickok' earlier and
used it in the sale of leather wallets, key cases, money folds, belts, men’s underwear, neckties,
hankies, and men's socks. While Sam Bun Liong used the same trademark in the sale of Marikina
shoes. Both products have different channels of trade. The Patent Office did not grant the
registration, but the Court of Appeals reversed the PPO decision.

Issue:

Is there infringement in this case?

HELD:

NONE. Emphasis should be on the similarity of the products involves and not on the
arbitrary classification or the general description of their properties or characteristics. Also, the mere
fact that one person has adopted and used a trademark on his goods does not prevent the adoption
and use of the same by others on unrelated articles of different kind.

There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in red with
white background in the middle of 2 branches of laurel (in light gold) while the one used by Sam Bun
Liong is the word 'Hickok ' in white with gold background between 2 branches of laurel in red with
the word 'shoes' also in red placed below the word 'Hickok'.
ESSO STANDARD VS COURT OF APPEALS
FACTS:

Esso Standard Eastern, Inc., then a foreign corporation duly licensed to do business in the
Philippines, is engaged in the sale of petroleum products which are Identified with its trademark
ESSO United Cigarette Corporation is a domestic corporation then engaged in the manufacture and
sale of cigarettes, after it acquired in November, 1963 the business, factory and patent rights of its
predecessor La Oriental Tobacco Corporation, one of the rights thus acquired having been the use of
the trademark ESSO on its cigarettes, for which a permit had been duly granted by the Bureau of
Internal Revenue.

The complaint of ESSO alleged that it had been for many years engaged in the sale of petroleum
products and its trademark ESSO had acquired a considerable goodwill to such an extent that the
buying public had always taken the trademark ESSO as equivalent to high quality petroleum
products. It asserted that the continued use by United Cigarettes Corporation of the same trademark
ESSO on its cigarettes was being carried out for the purpose of deceiving the public as to its quality
and origin to the detriment and disadvantage of its own products.

Unite Cigarettes Corporation admitted that it used the trademark ESSO on its own product of
cigarettes, which was not Identical to those produced and sold by the petitioner and therefore did
not in any way infringe on or imitate petitioner's trademark. It further argues that in order that there
may be trademark infringement, it is indispensable that the mark must be used by one person in
connection or competition with goods of the same kind as the complainant's.

ISSUE:

Is there trademark infringement?

RULING:

None. It is undisputed that the goods on which petitioner uses the trademark ESSO,
petroleum products, and the product of respondent, cigarettes, are non-competing. But as to
whether trademark infringement exists depends for the most part upon whether or not the goods
are so related that the public may be, or is actually, deceived and misled that they came from the
same maker or manufacturer. For non-competing goods may be those which, though they are not in
actual competition, are so related to each other that it might reasonably be assumed that they
originate from one manufacturer. Non-competing goods may also be those which, being
entirely unrelated, could  not reasonably be assumed to have a common source. in the former case
of related goods, confusion of business could arise out of the use of similar marks; in the latter case
of non-related goods, it could not. The vast majority of courts today follow the modern theory or
concept of "related goods" which the Court has likewise adopted and uniformly recognized and
applied.

Goods are related when they belong to the same class or have the same descriptive properties;
when they possess the same physical attributes or essential characteristics with reference to their
form, composition, texture or quality.

In the present case, the goods are obviously different from each other with "absolutely no iota of
similitude" as stressed in respondent court's judgment. They are so foreign to each other as to make
it unlikely that purchasers would think that petitioner is the manufacturer of respondent's
goods.ºThe mere fact that one person has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others on unrelated articles of a different
kind.

Considering the general appearances of each mark as a whole, the possibility of any confusion is
unlikely. A comparison of the labels of the samples of the goods submitted by the parties shows a
great many differences on the trademarks used. Even the lower court, which ruled initially for
petitioner, found that a "noticeable difference between the brand ESSO being used by the
defendants and the trademark ESSO of the plaintiff is that the former has a rectangular background,
while in that of the plaintiff the word ESSO is enclosed in an oval background."

246 CORPORATION (ROLEX MUSIC LOUNGE) vs. DAWAY

FACTS:

Respondents sued Petitioner for violation of the Trademark Law, contending that the use of
the mark “Rolex” in “Rolex Music Lounge” by 246 Corporation was an infringement on the rights of
respondents to the mark. Petitioner’s defense state that there could be no infringement since
respondent and petitioner dealt with goods and services entirely different from one another, thus,
confusion to consumers and injury to respondent would unlikely occur.

ISSUE/S:

Is there trademark infringement?

RULING:

The Court noted the veracity of the claim of petitioner that there is no infringement in the
use of a ‘junior user of the registered mark on the entirely different goods as stated in Sec 123.1 (f)
of RA 8293. The court however stressed the limitation of the provision such as when the mark used
is one that is internationally well-known or is attributable to a well-known licensee or registrant of
the said mark. So much so that the use of it by another would affect the reputation of the registrant
or its products and/or services due to association by mark usage to junior user. The Court however
held that before Sec 123.1 and its limitation are applied in the present case, the criteria to
determine whether mark is well-known must first be proven to have been met. The Court said that
for such to be established, a full-blown hearing on the merits must first be had. 

Zuneca Pharmaceutical v. Natrapharm Inc

Ownership over a trademark may also be acquired through prior use in good faith versus
registration. This ruling is of stark difference from the previous rulings of the Supreme Court where
the first person or entity to register a trademark defeats the right of the first person or entity to use
the trademark in good faith.

Facts:

The case involves a dispute between the use and ownership of the confusingly similar marks
“ZYNAPS” and “ZYNAPSE”.
Zuneca Pharmaceutical (“Zuneca”) has been engaged in the sale of “ZYNAPS”, an anti-convulsant
used to control all types of seizure disorders like epilepsyas early as 2004. Natrapharm, Inc.
(“Natrapharm”), on the other hand, has also been engaged in the sale of “ZYNAPSE” for the
treatment of cerebrovascular disease or stroke, and is the registrant of the “ZYNAPSE” mark which
was registered with the Intellectual Property Office of the Philippines (“IPO”) on 24 September 2007.

On 29 November 2007, Natrapharm filed a Trademark Infringement case against Zuneca, alleging
that “ZYNAPS” is confusingly similar to its registered trademark “ZYNAPSE”. While Zuneca argued
that as the first entity to use the mark in good faith, it was the rightful owner of the mark “ZYNAPS”.

Ruling on How Trademark Ownership is Acquired

The Supreme Court held that the language of the Intellectual Property Code of the Philippines (“IP
Code”) clearly provides that ownership of a mark is acquired through registration. Furthermore, the
Supreme Court stated that the intention of the lawmakers was to abandon the rule that ownership
of a mark is acquired through prior use, and that the rule on ownership used in Berris Agricultural
Co., Inc. v. Abyadang (“Berris”)and  E. Y. Industrial Sales, Inc. et al. v. Shen Dar Electricity and
Machinery Co., Ltd. (“E. Y Industrial Sales, Inc.”) is inconsistent with the IP Code regime of acquiring
ownership through registration.

Language of the IP Code

Section 122 of the IP Code provides how marks are acquired:

SECTION 122. How Marks are Acquired. -The rights in a mark shall be acquired  through
registration made validly  in accordance with the provisions of this law. (Sec. 2-A, R.A. No. 166a)
(Emphasis and underscoring supplied)

The language of the IP Code as to the acquisition of ownership of a mark provides for a stark
contrast with that of the old Trademark Law, which provided that prior use and non-abandonment
of a mark banned future registration of an identical or confusingly similar mark by a different
proprietor. Such a change effectively connotes that prior use no longer determines acquisition.

While doubts have been expressed by Associate Justices Leonen and Lazaro-Javier over the
supposed abandonment of the requirement of actual use, the Supreme Court clarified that the filing
of the Declaration of Actual Use (“DAU”) is not a prerequisite for the acquisition of ownership of a
mark as it is only necessary to maintain ownership over the registered Trademark. On the other
hand, the prima facie nature of the Certificate of Registration (“COR”) is only meant to recognize the
instances when the COR is no longer reflective of the ownership of the holder thereof, such as, but
not limited to, cases when the first registrant subsequently lost its ownership due to non-use or
abandonment.

Rule on Ownership – Berris and E. Y. Industrial Sales, Inc.

Zuneca erred in using the cases of Berris and E. Y Industrial Sales, Inc. as bases for its arguments.

The ruling in Berris was based on the fact that Berris, Inc. was the first to file the application and
register the mark under the IP Code. The fact of prior use was only mistakenly given undue weight.
[10]

On the other hand, the earliest dates of use by both parties in E. Y Industrial Sales, Inc.wereduring
the effectivity of the old Trademark Law, as amended. E.Y. Industrial Sales, Inc. had applied and
registered the mark under the IP Code, while Shen Dar Electricity and Machinery Co. Ltd. had applied
for the mark under the old Trademark Law.

Thus, both Berris and E. Y Industrial Sales, Inc. cannot be applied in cases where the marks of both
parties are used and/or registered under the IP Code.

Bad Faith in Trademark Registration and Use

Zuneca likewise claims that Natrapharm was in bad faith when they registered its mark with the IPO.
In cases of registration of a mark by means of fraud or bad faith, a party may pray for its cancellation
at any time by filing a petition for cancellation under Section 151 (b) of the IP Code,

“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 xxx (Underscoring supplied)”

The presence of bad faith alone renders a trademark registration void because the marks should not
have been registered in the first place. Hence, even if the marks are registered subsequently, the
registration will not confer the registrant any of the rights under Section 147.1 of the IP Code.

As a rule, good faith is always presumed, and upon him who alleges bad faith on the part of a
possessor rests the burden of proof. In this case, not only was Natrapharm able to explain the origin
of the name, it was also able to show that it had checked the IMS-PPI, IPO, and Bureau of Food and
Drug Administration Philippines (“BFAD”) databases and found that there was no brand name which
was confusingly similar to “ZYNAPSE”.

Since Natrapharm was not proven to have been in bad faith, it was thus considered to have acquired
all the rights of a trademark owner under the IP Code upon the registration of the “ZYNAPSE” mark.

Prior User in Good Faith

While Natrapharm is the owner of the “ZYNAPSE” mark, this does not, however, automatically mean
that its complaint against Zuneca is with merit. Prior users in good faith are also protected in the
sense that they will not be made liable for trademark infringement even if they are using a mark that
was subsequently registered by another person. Section 159.1 of the IP Code provides:

“Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no effect against
any person who, in good faith, before the filing date or the priority date, was using the mark for the
purposes of his business or enterprise: Provided, That his right may only be transferred or assigned
together with his enterprise or business or with that part of his enterprise or business in which the
mark is used. (Underscoring supplied)”

The application of Section 159.1 of the IP Code in the case at bar results in Zuneca’s exemption from
liability for trademark infringement.

Section 159.1 of the IP Code clearly contemplates that a prior user in good faith may continue to use
its mark even after the registration of the mark by the first-to-file registrant in good faith. In any
event, the application of Section 159.1 necessarily results in the co-existence of at least two entities
– the unregistered prior user in good faith, on one hand; and the first-to-file registrant in good faith
on the other – using identical or confusingly similar marks in the market at the same point in time,
even if there exists the likelihood of confusion.

Essentially, the decision indisputably pronounced that, under the IP Code, the ownership of
a trademark is acquired by its registration, with the exception created by Section 159.1 of the IP
Code.

SAN MIGUEL PURE FOODS VS. FOODSPHERE, INC.

Facts:

The parties herein are both engaged in the business of the manufacture, sale, and
distribution of food products, with SMPFCI owning the trademark "PUREFOODS FIESTA HAM" while
Foodsphere, Inc. products (Foodsphere) bear the "CDO" brand.

Sometime in 2006, however, Foodsphere introduced its "PISTA" ham and aggressively
promoted it in 2007, claiming the same to be the real premium ham. In 2008, SMPFCI launched its
"Dapat ganito ka-espesyal" campaign, utilizing the promotional material showing a picture of a
whole meat ham served on a plate with fresh fruits on the side. The ham is being sliced with a knife
and the other portion, held in place by a serving fork. But in the same year, Foodsphere launched its
"Christmas Ham with Taste" campaign featuring a similar picture. Moreover, in 2009, Foodsphere
launched its "Make Christmas even more special" campaign, directly copying SMPFCI's "Dapat ganito
ka-espesyal" campaign. Also in 2009, Foodsphere introduced its paper ham bag which looked
significantly similar to SMPFCI's own paper ham bag and its trade dress and its use of the word
"PISTA" in its packages were confusingly similar to SMPFCI's "FIESTA" mark.

On November 4, 2010, SMPFCI filed a Complaint for trademark infringement and unfair
competition against Foodsphere before the Bureau of Legal Affairs (BLA) of the Intellectual Property
Office (IPO) pursuant to Sections 155 and 168 of Republic Act (R.A.) No. 8293, otherwise known as
the Intellectual Property Code (IP Code), for using, in commerce, a colorable imitation of its
registered trademark in connection with the sale, offering for sale, and advertising of goods that are
confusingly similar to that of its registered trademark.

BLA- on July 17, 2012, dismissed SMPFCI’s complaint for lack of merit. First, the BLA held that there
could be no trademark infringement because Foodsphere began using the "PISTA" mark in 2006 and
even filed a trademark application therefor in the same year, while SMPFCI's application for
trademark registration for "FIESTA" was filed and approved only in 2007. SMPFCI, thus, had no cause
of action. Second, SMPFCI's complaint was filed beyond the four (4)-year prescriptive period
prescribed under the Rules and Regulation on Administrative Complaints for Violation of Law
Involving Intellectual Property Rights. Third, the BLA found the testimonies and surveys adduced in
evidence by SMPFCI to be self-serving. Fourth, comparing the competing marks would not lead to
confusion, much less deception of the public. Finally, the BLA ruled that SMPFCI failed to
convincingly prove the presence of the elements of unfair competition.

Office of the Director General – partially granted the decision of the BLA, affirming the absence of
trademark infringement but finding Foodshere liable of unfair competition. CA – affirmed Director
General’s decision.

Issue:
 Whether or not Foodsphere is liable for trademark infringement and unfair competition
under the Intellectual Property Code?

Held:

Yes. Time and again, the Court has held that unfair competition consists of the passing off (or
palming off) or attempting to pass off upon the public of the goods or business of one person as the
goods or business of another with the end and probable effect of deceiving the public. Passing off (or
palming off) takes place where the defendant, by imitative devices on the general appearance of the
goods, misleads prospective purchasers into buying his merchandise under the impression that they
are buying that of his competitors. In other words, the defendant gives his goods the general
appearance of the goods of his competitor with the intention of deceiving the public that the goods
are those of his competitor. The "true test," therefore, of unfair competition has thus been "whether
the acts of the defendant have the intent of deceiving or are calculated to deceive the ordinary
buyer making his purchases under the ordinary conditions of the particular trade to which the
controversy relates."

Thus, 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 confusing similarity may or may not result from similarity in the marks but may
result from other external factors in the packaging or presentation of the goods. 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.

In the instant case, the Court finds no error with the findings of the CA and Director General
insofar as the presence of the foregoing elements is concerned.

1. there exists a substantial and confusing similarity in the packaging of Foodsphere's

product with that of SMPFCI, which, as the records reveal, was changed by Foodsphere from a paper
box to a paper ham bag that is significantly similar to SMPFCI's paper ham bag. As duly noted by the
Director General and the CA, both packages use paper ham bags as the container for the hams, both
paper ham bags use the red color as the main colors, and both have the layout design appearing on
the bags consisting of a partly sliced ham and fruits on the front and other ham varieties offered at
the back. Thus, Foodsphere's packaging in its entirety, and not merely its "PISTA" mark thereon,
renders the general appearance thereof confusingly similar with the packaging of SMPFCI's ham,
that would likely influence purchasers to believe that these products are similar, if not the same, as
those of SMPFCI.

2. Foodsphere's intent to deceive the public, to defraud its competitor, and to ride on the
goodwill of SMPFCI's products is evidenced by the fact that not only did Foodsphere switch from its
old box packaging to the same paper ham bag packaging as that used by SMPFCI, it also used the
same layout design printed on the same. As the Director General observed, why, of the millions of
terms and combinations of letters, designs, and packaging available, Foodsphere had to choose
those so closely similar to SMPFCI's if there was no intent to pass off upon the public the ham of
SMPFCI as its own with the end and probable effect of deceiving the public.