IPL Case Digests 2

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ASIA BREWERY, INC.

vs.
THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION
G.R. No. 103543 July 5, 1993

Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for
infringement of trademark and unfair competition on account of the latter’s “BEER PALE
PILSEN” or “BEER NA BEER” product which has been competing with SMC’s SAN
MIGUEL PALE PILSEN. A decision was rendered by the trial judge dismissing SMC’s
complaint because ABI has not committed trademark infringement or unfair competition against
SMC for the reason that the trademarks of each product has no significant similarity that would
likely to cause confusion or mistake or to deceive purchasers as to the source or origin of the
beer in question. The Court of Appeals reversed. Hence, this present petition for certiorari filed
by ABI.

Issue:
Whether or not ABI infringes SMC’s trademark: “San Miguel Pale Pilsen with
Rectangular Hops and Malt Design,” and thereby commits unfair competition against the latter.

Held:
No. There is absolutely no similarity in the dominant features of both trademarks.
Infringement is determined by the “test of dominancy” rather than by differences in variations in
the details of one trademark and of another. It has been consistently held that the question of
infringement of a trademark is to be determined by the test of dominancy. Similarity in size,
form and color, while relevant, is not conclusive. If the competing trademark contains the main
or essential or dominant features of another, and confusion and deception is likely to result,
infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the
infringing label should suggest an effort to imitate. The question at issue in cases of
infringement of trademarks is whether the use of marks involved would be likely to cause
confusion or mistakes in the mind of the public or deceive purchasers.
In the case at bar, 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 the 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.

Prosource International, Inc.


vs.
Horphag Research Management SA.
G.R. No. 180073 November 25, 2009

Facts:
Respondent filed a Complaint for Infringement of Trademark with Prayer for
Preliminary Injunction against petitioner, in using the name PCO-GENOLS for being
confusingly similar. Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-
GENOLS have the same suffix "GENOL" which appears to be merely descriptive and thus
open for trademark registration by combining it with other words and concluded that the marks,
when read, sound similar, and thus confusingly similar especially since they both refer to food
supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court
explained that under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar
to PYCNOGENOL.

Issue:
Whether or not the names are confusingly similar.

Held:
Yes. There is confusing similarity and the petition is denied.
The Supreme Court applied the Dominancy Test. Both the words have the same suffix
"GENOL" which on evidence, appears to be merely descriptive and furnish no indication of the
origin of the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. When the two words are pronounced, the sound
effects are confusingly similar not to mention that they are both described by their
manufacturers as a food supplement and thus, identified as such by their public consumers. And
although there were dissimilarities in the trademark due to the type of letters used as well as the
size, color and design employed on their individual packages/bottles, still the close relationship
of the competing products’ name in sounds as they were pronounced, clearly indicates that
purchasers could be misled into believing that they are the same and/or originates from a
common source and manufacturer.

Del Monte Corporation and Philippine Packing Corporation


vs.
Court of Appeals and Sunshine Sauce Manufacturing Industries
G.R. No. L-78325 January 25, 1990

Facts:
Petitioner Del Monte Corporation (Del Monte), through its local distributor and
manufacturer, PhilPack filed an infringement of copyright complaint against respondent
Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen
sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the
petitioner, to which is deceiving and misleading to the public.
The Regional Trial Court of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties nor on the continued use
of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.

Issues:
1. Whether or not Sunshine Sauce is guilty of unfair competition.
2. Whether or not Sunshine Sauce is guilty of infringement for having used the Del Monte
bottle.

Held:
1. Yes. The Court is agreed that similarities holds a greater weight in this case. The
Sunshine label is a colorable imitation of the Del Monte trademark. What is undeniable is
the fact that when a manufacturer prepares to package his product, he has before him a
boundless choice of words, phrases, colors and symbols sufficient to distinguish his
product from the others. Sunshine chose, without a reasonable explanation, to use the
same colors and letters as those used by Del Monte though the field of its selection was
so broad, the inevitable conclusion is that it was done deliberately to deceive.
2. With regard to the bottle use, Sunshine despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was
embossed on the bottle, still opted to use the petitioners' bottle to market a product
which Philpack also produces. This clearly shows the private respondent's bad faith and
its intention to capitalize on the latter's reputation and goodwill and pass off its own
product as that of Del Monte.

Fruit of the Loom, Inc.


vs.
Court of Appeals
G.R. No. L-32747 November 29, 1984
Facts:
Petitioner is a US corporation, with the trademark Fruit of the Loom. It manufactures
undergarments. Respondent is a domestic corporation, with the trademark Fruit for Eve. It also
manufactures undergarments.
Petitioner filed a case for cancellation of Respondent's trademark Fruit for Eve. It alleges
there is colorable imitation as regards the sound "Fruit" and the appearance of the hang tag
consisting of a big red apple. Petitioner claims that the prominent and dominant features found
in both Petitioner's and Respondent' trademark are the word "Fruit" and the big red apple
design.

Issue:
Whether or not there is confusing similarity to support a claim of infringement and
warrant the cancellation of Respondent's trademark.

Held:
No. There are substantial differences that overcome any similarities, hence, there is no
infringement.
There is infringement of trademark when the use of the mark involved would be likely to
cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or
source of the commodity. A comparison between trademarks must be made. Comparison of the
words is not the only determinant factor. The trademarks in their entirety as they appear in their
respective labels or hang tags must also be considered in relation to the goods to which they are
attached.
Standing by itself, Fruit of the Loom is wholly different from Fruit for Eve. The Court
does not agree with Petitioner that the dominant feature of both trademarks is the word Fruit,
for even in the printing of such word in both hang tags, there is no special emphasis made.
The similarities of the competing trademarks in this case are completely lost in the
substantial differences in the design and general appearance of their respective hang tags. The
trademarks are not similar to each other, so as to cause confusion to consumers. The ordinary
purchaser must be credited with a minimum level of intelligence to be able to see the obvious
differences between the two trademarks.
246 Corporation
vs.
Hon. Reynaldo B. Daway
G.R. No.157216 November 20, 2003

Facts:
Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and
Crown Device, filed against petitioner 246 Corporation the instant suit for
trademark infringement and damages with prayer for the issuance of a restraining order or writ
of preliminary injunction. Respondents alleged that sometime in July 1996, petitioner adopted
and, since then, has been using without authority the mark "Rolex" in its business name "Rolex
Music Lounge" as well as in its newspaper advertisements as – "Rolex Music Lounge,
KTV, Disco & Party Club." Petitioner argued that respondents have no cause of action because
no trademark infringement exist; that no confusion would arise from the use by petitioner of the
mark "Rolex" considering that its entertainment business is totally unrelated to the items catered
by respondents such as watches, clocks, bracelets and parts thereof.
In 2000, 246 Corp. filed a motion for preliminary hearing on its affirmative defense;
which the court thereafter issued a subpoena ad testificandum to Atty. Atienza. Montres Rolex
opposed, and the trial court quashed the subpoena. 246 corp. filed a petition for certiorari before
the Court of Appeals, which was dismissed. Hence, the petition for review on certiorari.

Issue:
Whether or not the junior use of a registered mark on entirely different goods subsists.

Held:
The rule, that there is no infringement in the use of a ‘junior user of the registered mark
on the entirely different goods, has been modified by Section 123.1 (f) of Republic Act No. 8293
(Intellectual Property code). His use is precluded when that the mark is well known
internationally and, in the Philippines, the use of the mark would indicate a connection or
relationship between the user and the registrant, and that the interests of the well-known mark
are likely to be damaged. The court however cannot resolve the merits considering the facts as to
the existence/absence of the requisites should be addressed in a full- blown hearing and not on a
mere preliminary hearing.

Lyceum of the Philippines


vs.
Court of Appeals
G.R. No. 101897 March 5, 1993

Facts:
Petitioner had sometime before commenced in the SEC a proceeding against Lyceum of
Baguio to require it to change its corporate name and adopt another name not similar to or
identical with that of petitioner. SEC Commissioner Sulit held that corporate name of petitioner
and Lyceum of Baguio were substantially identical and that petitioner had registered its name
ahead of L.yceum of Baguio. Petitioner then wrote all the educational institutions it could find
using the word “Lyceum” as part of their corporate name, and advised them to discontinue such
use of “Lyceum”. Petitioner instituted before the SEC a case to enforce its propriety right to the
word Lyceum. SEC Officer sustained petitioner’s claim to an exclusive right to use the word
“Lyceum”. SEC En Banc reversed said decision. It ruled that the attaching of geographical
names to the word Lyceum served sufficiently to distinguish the schools from one another and
the schools are physically quite remote from each other. CA affirmed SEC En Banc.

Issue:
Whether or not “Lyceum” can be appropriated by the petitioners to the exclusion of
others.

Held:
No. Confusion and deception are effectively precluded by the appending of geographic
names to the word “Lyceum”. “Lyceum” is a Latin word for the Greek lykeion which referred to
a locality on the river Illissius in Ancient Athens. “Lyceum” is in fact as generic in character as
the word “university”. The Doctrine of Secondary Meaning is applicable in this case. The test is
whether or not the use of the name has been for such length of time and with exclusivity as to
have become associated or identified with the petitioner in the mind of the general public.
Petitioner failed to prove that it had been using the same word all by itself to the exclusion of
others. One of the respondents (Western Pangasinan Lyceum) used the term “Lyceum” 17 years
before the petitioner registered its own corporate name. Petitioner’s use of the word “Lyceum”
was neither the first use of that term in the Philippines nor an exclusive use thereof.

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