G.R. No.

L-26676 July 30, 1982 Petitioner moved for a reconsideration, but the same
was denied.
PHILIPPINE REFINING CO., INC., petitioner,
vs. Hence, this petition.
NG SAM and THE DIRECTOR OF
PATENTS, respondents. A rudimentary precept in trademark protection is that
"the right to a trademark is a limited one, in the sense
ESCOLIN, J.: that others may used the same mark on unrelated
goods." 1 Thus, as pronounced by the United States
The sole issue raised in this petition for review of the Supreme Court in the case of American Foundries vs.
decision of the Director of patents is whether or not the Robertson  2, "the mere fact that one person has adopted
product of respondent, Ng Sam, which is ham, and those and used a trademark on his goods does not prevent the
of petitioner consisting of lard, butter, cooking oil and adoption and use of the same trademark by others on
soap are so related that the use of the same trademark articles of a different description."
"CAMIA" on said goods would likely result in confusion
as to their source or origin. Such restricted right over a trademark is likewise
reflected in our Trademark law. Under Section 4(d) of the
The trademark "CAMIA" was first used ill the Philippines law, registration of a trademark which so resembles
by petitioner on its products in 1922. In 1949, petitioner another already registered or in use should be denied,
caused the registration of said trademark with the where to allow such registration could likely result in
Philippine Patent Office under certificates of registration confusion, mistake or deception to the consumers.
Nos. 1352-S and 1353-S, both issued on May 3, 1949. Conversely, where no confusion is likely to arise, as in
Certificate of Registration No. 1352-S covers vegetable this case, registration of a similar or even Identical mark
and animal fats, particularly lard, butter and cooking oil, may be allowed.
all classified under Class 47 (Foods and Ingredients of
Food) of the Rules of Practice of the Patent Office, while The term "CAMIA" is descriptive of a whole genus of
certificate of registration No. 1353-S applies to abrasive garden plants with fragrant white flowers. Some people
detergents, polishing materials and soap of all kinds call the "CAMIA" the "white ginger plant" because of its
(Class 4). tuberous roots, while children refer to it as the butterfly
flower because of its shape. Being a generic and
On November 25, 1960, respondent Ng Sam, a citizen common term, its appropriation as a trademark, albeit in
residing in Iloilo City, filed an application with the a fanciful manner in that it bears no relation to the
Philippine Patent office for registration of the Identical product it Identifies, is valid. However, the degree of
trademark "CAMIA" for his product, ham, which likewise exclusiveness accorded to each user is closely
falls under Class 47. Alleged date of first use of the restricted. 3
trademark by respondent was on February 10, 1959.
The records of this case disclose that the term "CAMIA"
After due publication of the application, petitioner filed an has been registered as a trademark not only by
opposition, in accordance with Section 8 of Republic Act petitioner but by two (2) other concerns, as follows:
No. 166, otherwise known as the Trademark Law, as
amended. Basis of petitioner's opposition was Section 1. CAMIA Application No. 280
4(d) of said law, which provides as unregistrable: Registration No. SR-320 Date
Registered — May 26, 1960 Owner —
a mark which consists of or comprises a Everbright Development Company
mark or tradename which so resembles Business Address — 310 M. H. del Pilar
a mark or tradename registered in the Grace Park, Caloocan City Class 4 —
Philippines or a mark or tradename Thread and Yarn
previously used in the Philippines by
another and not abandoned, as to be 2. CAMIA and Representation
likely, when applied to or used in Application No. 538 Date Filed —
connection with the goods, business August 10, 1945 Date Registered - April
services of the applicant, to cause 20, 1946 Owner — F.E. Zuellig, Inc.
confusion or mistake or to deceive Business Address — 55 Rosario St.,
purchasers. Manila Class 43 — Particular Good on
which mark is used: Textiles,
The parties submitted the case for decision without Embroideries laces, etc.
presenting any evidence: thereafter the Director of
patents rendered a decision allowing registration of the A trademark is designed to Identify the user. But it
trademark "CAMIA" in favor of Ng Sam. should be so distinctive and sufficiently original as to
enable those who come into contact with it to recognize
instantly the Identity of the user. " It must be affirmative average consumer. One purchasing ham would exercise
and definite, significant and distinctive, capable to a more cautious inspection of what he buys on account
indicate origin." 4 of it price. Seldom, if ever, is the purchase of said food
product delegated to household helps, except perhaps to
It is evident that "CAMIA" as a trademark is far from those who, like the cooks, are expected to know their
being distinctive. By itself, it does not Identify petitioner business. Besides, there can be no likelihood for the
as the manufacturer or producer of the goods upon consumer of respondent's ham to confuse its source as
which said mark is used, as contra-distinguished to anyone but respondent. The facsimile of the label
trademarks derived from coined words such as "Rolex", attached by him on his product, his business name
"Kodak" or "Kotex". It has been held that if a mark is so "SAM'S HAM AND BACON FACTORY" written in bold
commonplace that it cannot be readily distinguished from white letters against a reddish orange background 6, is
others, then it is apparent that it cannot Identify a certain to catch the eye of the class of consumers to
particular business; and he who first adopted it cannot which he caters.
be injured by any subsequent appropriation or imitation
by others, and the public will not be deceived." 5 In addition, the goods of petitioners are basically derived
from vegetable oil and animal fats, while the product of
The trademark "CAMIA" is used by petitioner on a wide respondent is processed from pig's legs. A consumer
range of products: lard, butter, cooking oil, abrasive would not reasonably assume that, petitioner has so
detergents, polishing materials and soap of all kinds. diversified its business as to include the product of
Respondent desires to use the same on his product, respondent.
ham. While ham and some of the products of petitioner
are classified under Class 47 (Foods and Ingredients of Mr. Runolf Callman, in Section 80.3, VOL. I, p. 1121 of
Food), this alone cannot serve as the decisive factor in his book, Unfair Competition and Trade Marks, declare:
the resolution of whether or not they are related goods.
Emphasis should be on the similarity of the products While confusion of goods can only be
involved and not on the arbitrary classification or general evident, where the litigants are actually
description of their properties or characteristics. in competition, confusion of business
may arise between non-competitive
In his decision, the Director of Patents enumerated the interests as well. This is true whether or
factors that set respondent's product apart from the not the trademarks are registered. Sec.
goods of petitioner. He opined and We quote: 16 of the Trademark Act, in referring to
'merchandise of substantially the same
I have taken into account such factors descriptive properties, embraces
as probable purchaser attitude and competitive and non-competitive
habits, marketing activities, retail outlets, trademark infringement but it is not so
and commercial impression likely to be extensive as to be applicable to cases
conveyed by the trademarks if used in where the public would not reasonably
conjunction with the respective goods of expect the plaintiff to make or sell the
the parties. I believe that ham on one same class of goods as those made or
hand, and lard, butter, oil, and soap on sold by the defendant. (Emphasis
the other are products that would not supplied).
move in the same manner through the
same channels of trade. They pertain to In fine, We hold that the businesss of the parties are
unrelated fields of manufacture, might non-competitive and their products so unrelated that the
be distributed and marketed under use of Identical trademarks is not likely to give rise to
dissimilar conditions, and are displayed confusion, much less cause damage to petitioner.
separately even though they frequently
may be sold through the same retail WHEREFORE, the instant petition is hereby dismissed
food establishments. Opposer's and the decision of the Director of Patents in Inter Partes
products are ordinary day-to-day Case No. 231 affirmed in toto. Costs against petitioner.
household items whereas ham is not
necessarily so. Thus, the goods of the SO ORDERED.
parties are not of a character which
purchasers would be likely to attribute to
a common origin. (p. 23, Rollo).

The observation and conclusion of the Director of

Patents are correct. The particular goods of the parties
are so unrelated that consumers would not in any
probability mistake one as the source or origin of the
product of the other. "Ham" is not a daily food fare for the
 4. That the said trademark is in actual use in
commerce in or with the Philippines not less
G.R. No. L-18337             January 30, 1965 than two months before this application is filed.

CHUA CHE, petitioner, 5. That no other person, partnership,

vs. corporation, or association, to the best of his
PHILIPPINES PATENT OFFICE and SY knowledge and belief, has the right to use said
TUO, respondents. trademark in the Philippines, either in the
identical form or in any such near resemblance
thereto as might be calculated to deceive.
PAREDES, J.:

Under date of July 6, 1959, an Examiner of the

This is a petition to review the decision of the Director of
Department of Commerce and Industry, submitted a
Patents, in Inter Partes Case No. 161, denying the
report recommending the allowance of the application,
application of petitioner Chua Che for the registration of
which report was approved by the Supervising TM
"T.M. X-7" for use on soap Class 51, being
Examiner. After the Notice of allowance was published in
manufactured by said Chua Che, upon the opposition of
the Official Gazette, as required, respondent Sy Tuo
respondent Sy Tuo.
presented a "Notice of Opposition," dated October 15,
1959, anchoring said opposition on the following
Under date of October 30, 1958, Chua Che presented allegations:
with the Philippines Patent Office a petition praying for
the registration in his favor the trade name "X-7". The
1. The registration of the trademark "X-7" as
petition, states:
applied for by CHUA CHE will not only violate
the rights and interests of the Oppositor over his
The undersigned CHUA CHE, a citizen of China, registered trademark "X-7" covered by
a resident of 2804 Limay St., Tondo, Manila, and Certificate of Registration No. 5,000, issued April
doing business at same address, has adopted 21, 1951, but will also tend to mislead the
and used the trademark "X-7" shown in the purchasing public and make it convenient for
accompanying Drawing. unscrupulous dealers to pass off the goods of
the applicant CHUA CHE, for those of the
In accordance with the requirements of law, the oppositor SY TUO, to the injury of both the
undersigned declares that this trademark — oppositor and the public.

1. Was first used by him on June 10, 1957. 2. The registration of the said trademark "X-7" in
the name of CHUA CHE will be in violation of,
2. Was first used by him in commerce in or with and will run counter to, Section 4 (d) of Republic
the Philippines on June 10, 1957. Act No. 166, as amended, because it is
confusingly similar to the trademark "X-7"
3. Has been continuously used by him in trade in covered by Registration No. 5,000 previously
or with the Philippines for more than one year. registered to, and being used by the oppositor
and is not abandoned.
4. Is, on the date of this application, actually
used by him on the following goods, classified The Oppositor SY TUO, doing business as the
according to the Official Classification of Goods Western Cosmetic Laboratory will rely on the
(Rule 82): following facts:

Class 51 — Soap (a) Oppositor has prior use of the

trademark "X-7" as he has been using it
extensively and continuously since July
5. Is applied to the goods or to the packages
31, 1952, while the applicant, Chua Che,
containing the same, by placing thereon a
allegedly used his trademark only since
printed label on which the trademark is shown,
June 10, 1957.1äwphï1.ñët
or by directly impressing the mark to the goods.
(b) Oppositor's mark "X-7" is distinctive
The corresponding declaration, which was under oath,
and his invented mark and not merely
contained, among others, the following:
an ordinary, common and weak mark.

3. That he believes himself to be the lawful

(c) The oppositor and the applicant use
owner of the trademark sought to be registered.
the trademark "X-7" for allied and
closely related products.
 (d) The oppositor has spent a huge existed some kind of trade connection between
amount by way of advertising and applicant and opposer.
advertising his "X-7" brand.
Opposer's record shows that he has been using
(e) The oppositor has spent a big since July 31, 1953 the trademark X-7 on
amount in expanding his business for perfume, lipstick and nail polish; that he has
the manufacture of toilet soap and spent substantial amounts of money in building
crystal laundry soap with his already upon the goodwill of this trademark through
popular "X-7" brand. advertisements in all kinds of media — through
newspapers of general circulation, by means of
(f) The trademark applied for by the billboards in various places in the Philippines,
applicant Chua Che consists of the and also over the radio and television. In these
trademark "X-7" and anyone is likely to advertisements opposer has spent about
be misled as to the source or origin by P120,000.00. There is no question that opposer
the close resemblance or identity with enjoys a valuable goodwill in the trademark X-7.
the trademark "X-7" of the oppositor.
The products of the parties, while specifically
Attached to the Opposition were labels (samples) being different, are products intended for use in the
used by oppositor on his products, which clearly show home and usually have common purchasers.
"X-7". Furthermore, the use of X-7 for laundry soap is
but a natural expansion of business of the
opposer. In fact, herein opposer in 1956, prior to
Petitioner herein presented an Answer to Notice of
the alleged date of first use by respondent-
Opposition, claiming among others that the grounds of
applicant of the trademark X-7 for laundry soap
opposition are not correct, since although it is admitted
on June 10, 1957, had made steps in expanding
that "X-7" is registered in the name of oppositor, said
the use of this trademark to granulated soap.
trademark is not being used on soap, but purely toilet
Under these circumstances, it is concluded that
articles. After the presentation of the Answer the case
the average purchasers are likely to associate X-
was heard, wherein the parties presented their
7 laundry soap with X-7 perfume, lipstick and
respective evidence, both testimonial and documentary.
nail polish or to think that the products have
In the memoranda of the contenders, they limited the
common origin or sponsorship.
principal issues, thus —

IN VIEW OF THE ABOVE FINDINGS, the

Oppositor SY TUO —
opposition in this case should be as it is hereby
sustained and consequently Application Serial
The registration of the trademark "X-7" in the No. 6941, of Chua Che, is also hereby rejected.
name of applicant CHUA CHE will likely mislead
the public so as to make them believe that said
OPPOSITION SUSTAINED
goods are manufactured or sponsored by or in
some way in trade associated with opposer.
The above judgment is now before Us, applicant-
appellant claiming that it was error for the Director to
Applicant CHUA CHE —
conclude that opposer SY TUO had priority to use the
trademark in question, and that the use by appellant of
In Inter Partes proceedings, the principal issue is the trademark "X-7" on granulated soap to be
"priority of adoption and use." Since opposer has manufactured and sold by him, would likely mislead
not yet used "X-7" mark on soap, but will still use purchasers.
it, applicant should be entitled to the registration
of the same.
At the very outset, we would like to state that in cases of
the nature of the one at bar, only questions of law should
The Director of Patents rendered judgment on January be raised, and the only exception to this rule, meaning
18, 1961, the pertinent portions of which read: that findings of facts may be reviewed, is when such
findings are not supported by substantial evidence (Sec.
Based on those facts there is no question that 2, Rule 44, Revised Rules). The finding of the Director of
opposer's first use of the trademark X-7 on July Patents Office to the effect that opposer-appellee Sy Tuo
31, 1953, is prior to applicant's first use of the had priority of use and adoption of the trademark "X-7",
mark on June 10, 1957. The only question then is for all intents and purposes, one of fact. This being the
in this case is whether or not purchasers of X-7 case, such finding becomes conclusive to this Court.
perfume, lipstick and nail polish would likely Even on this sole issue alone, the petition for review
upon seeing X-7 laundry soap, attribute common must fall.
origin to the products or assume that there
However, there are other matters which must be
clarified. For instance, the fact that appellee has not yet
used the trademark "X-7" on granulated soap, the
product on which appellant wants to use the said
trademark. The circumstance of non-actual use of the
mark on granulated soap by appellee, does not detract
from the fact that he has already a right to such a
trademark and should, therefore, be protected. The
observation of the Director of Patents to the effect that
"the average purchasers are likely to associate X-7
laundry soap with X-7 perfume, lipstick and nail polish or
to think that the products have common origin or
sponsorship," is indeed well taken. It has been pointed
out by appellant that the product upon which the
trademark X-7 will be used (laundry soap) is different
from those of appellee's, and therefore no infringement
and/or confusion may result. We find no merit in the
above contention, for it has been held that while it is no
longer necessary to establish that the goods of the
parties possess the same descriptive properties, as
previously required under the Trade Mark Act of 1905,
registration of a trademark should be refused in cases
where there is a likelihood of confusion, mistake, or
deception, even though the goods fall into different
categories. (Application of Sylvan Sweets Co., 205 F.
2nd, 207.) The products of appellee are common
household items nowadays, in the same manner as
laundry soap. The likelihood of purchasers to associate
those products to a common origin is not far-fetched.
Both from the standpoint of priority of use and for the
protection of the buying public and, of course, appellee's
rights to the trademark "X-7", it becomes manifest that
the registration of said trademark in favor of applicant-
appellant should be denied.

PREMISES CONSIDERED, the decision sought to be

reviewed should be, as it is hereby affirmed in all
respects, with costs against appellant CHUA CHE in
both instances.
 that alleged in his application for registration,
hence, respondent is not entitled to carry back
the date of first use to a prior date.

II. The Director erred in holding that respondent

is the prior adopter and user of his mark and in
concluding that this is strengthened with
documentary evidence that respondent has
been using his mark since 1953 as tailor and
G.R. No. L-23023           August 31, 1968 haberdasher.

JOSE P. STA. ANA, petitioner, III. The Director of Patents erred in not finding
vs. false and fabricated respondent's testimonial
FLORENTINO MALIWAT and TIBURCIO S. EVALLE, and documentary evidence and Director should
in his capacity as Director of Patents, respondents. have applied the rule "Falsus in uno, falsus in
omnibus" and should have disregarded them.
Rodolfo A. Francisco for petitioner.
Catalino S. Maravilla for respondent Florentino Maliwat. IV. The Director of Patents erred in declaring
Office of the Solicitor General for respondent Tiburcio S. that Maliwat has the prior right to the use of his
Evalle. trademark on shoes and such right may be
carried back to the year 1953 when respondent
REYES, J.B.L., J.: started his tailoring and haberdashery business
and in holding that the manufacture of shoes is
Petition for review of the decision of the respondent within the scope of natural expansion of the
Director of Patents in an interference proceeding 1 (Inter business of a tailor and haberdasher.
Partes Case No. 291), finding for the senior party
applicant, Florentino Maliwat, the herein private V. The Director of Patents erred in failing to
respondent, and against the junior party applicant 2 Jose apply the stricture that parties should confine
P. Sta. Ana, the herein petitioner. use of their respective marks to their
corresponding fields of business, and should
On 21 June 1962, Florentino Maliwat filed with the have allowed the concurrent use of tradename
Patent Office an application for registration of the FLORMEN SHOE MANUFACTURERS and the
trademark FLORMANN, which is used on shirts, pants, trademark FLORMANN provided it is not used
jackets and shoes for ladies, men, and children, claiming on shoes.
first use in commerce of the said mark on 15 January
1962. The claim of first use was subsequently amended The findings of the Director that Maliwat was the prior
to 6 July 1955. adopter and user of the mark can not be contradicted,
since his findings were based on facts stipulated in the
On 18 September 1962, Jose P. Sta. Ana filed an course of the trial in the interference proceedings. The
application for the registration of the tradename recorded stipulation is as follows:
FLORMEN SHOE MANUFACTURERS (SHOE
MANUFACTURERS disclaimed),3 which is used in the ATTY. FRANCISCO: Your Honor please, with
business of manufacturing ladies' and children's shoes. the mutual understanding of the counsel for the
His claim of first use in commerce of the said tradename Junior Party and the counsel for the Senior Party
is 8 April 1959. in their desire to shorten the proceedings of this
case, especially on matters that are admitted
In view of the admittedly confusing similarity between the and not controverted by both parties, they have
trademark FLORMANN and the tradename FLORMEN, agreed and admitted that Mr. Jose P. Sta. Ana,
the Director of Patents declared an interference. After the Junior Party Applicant in this case, is
trial, the respondent Director gave due course to engaged solely in the manufacture of shoes
Maliwat's application and denied that of Sta. Ana. The under the firm name FLORMEN SHOE
latter, not satisfied with the decision, appealed to this MANUFACTURERS since April 1959; that the
Court. name FLORMEN SHOE MANUFACTURERS is
registered with the Bureau of Commerce on April
The petitioner assigned the following errors: 8, 1959, as shown by Exhibits "A" and "A-2".
That Mr. Florentino Maliwat has been engaged
in the manufacture and sale of menswear shirts,
I. The Director of Patents erred in not finding that
polo shirts, and pants, since 1953, using
respondent (senior party-applicant) failed to
FLORMANN as its trademark. That Mr.
establish by clear and convincing evidence
Florentino Maliwat began using the trademark
earlier date of use of his mark FLORMANN than
FLORMANN on shoes on January 1962 and the
 firm name FLORMANN SHOES under which the Supreme Court, which is both untimely and
these shoes with the trademark FLORMANN unhonorable.
were manufactured and sold was first used on
January 1962, having also been registered with Upon requirement by this Court, stenographer Cleofe
the Bureau of Commerce on January 1962 and Rosales commented on petitioner's motion that what she
with other departments of the government, like had taken down were actually uttered by counsel for Sta.
the Bureau of Labor, the Social Security System Ana, no more, no less; that it was practically and highly
and the Workmen's Compensation in 1962. impossible for her to have intercalated into the records
the questioned stipulation of facts because of the length
ATTY. MARAVILLA: On behalf of the Senior of counsel's manifestations and the different subject
Party Applicant, represented by this humble matters of his statements, aside from the concurrence of
representation, I respectfully concur and admit Maliwat's counsel and the reservation on the resolution
all those stipulations above mentioned. made by the hearing officer; and that despite her length
of service, since 1958, as stenographic reporter, there
HEARING OFFICER: The court reserves the had been no complaint against her, except this one.
resolution on those stipulations. We can proceed
now with the redirect examination. (T.s.n., 9 Counsel for Sta. Ana replied to the foregoing comments,
August 1963, pp. 33-34). alleging, among others, that after his receipt of the
decision, after 5 May 1964, he bought the transcript and
And the Rules of Court provide:1äwphï1.ñët requested the stenographer to verify the contents of
pages 33 and 34 of her transcript but, despite several
requests, and for a period of seven (7) months, for her to
Sec. 2. Judicial admissions. — Admission made
produce the stenographic notes, she has failed to
by the parties in the pleadings, or in the course
produce said notes.
of the trial or other proceedings do not require
proof and can not be contradicted unless
previously shown to have been made through On 2 April 1965, stenographer Rosales sent to the clerk
palpable mistake." (Rule 129, Revised Rules of of this Court the transcript of stenographic notes.
Court).
This Court, on 2 February 1965, denied, for being late
Since the aforequoted stipulation of facts has not been the motion to present additional testimonial and
shown to have been made through palpable mistake, it is documentary evidence, and, on 8 April 1965, deferred
vain for the petitioner to allege that the evidence for action on the objection to a portion of the transcript until
respondent Maliwat is false, fabricated, inconsistent, after hearing.
indefinite, contradictory, unclear, unconvincing, and
unsubstantial. We find no substantiation of the charge that the
stipulation of facts appearing on pages 33 to 34 of the
The rule on judicial admissions was not found or transcript of stenographic notes taken on 9 August 1963
provided for in the old Rules but can be culled from had been intercalated; hence, the presumption that the
rulings laid down by this Court previous to its revision stenographer regularly performed her duty stands. The
(Irlanda v. Pitargue, 22 Phil. 383; 5 Moran 57-59, 1963 integrity of the record being intact, the petitioner is bound
Ed.). It was the law, then and now, being an application by it. We can not overlook that even if his charges were
of the law on estoppel. true, it was plain and inexcusable negligence on his part
not to discover earlier the defect he now complains of, if
any, and in not taking steps to correct it before the
To be true, petitioner Sta. Ana, through counsel, filed
records were elevated to this Court.
with this Court, on 24 December 1964, a motion entitled
"MOTION TO ORDER STENOGRAPHER TO
PRODUCE STENOGRAPHIC NOTES AND TO An application for registration is not bound by the date of
CORRECT TRANSCRIPT OF STENOGRAPHIC first use as stated by him in his application, but is entitled
NOTES; TO ALLOW PETITIONER TO WITHDRAW to carry back said stated date of first use to a prior date
FROM STIPULATION OF FACTS AND BE ALLOWED by proper evidence; but in order to show an earlier date
TO PRESENT ADDITIONAL EVIDENCE; AND TO of use, he is then under a heavy burden, and his proof
SUSPEND PERIOD FOR FILING PETITIONER'S must be clear and convincing (Anchor Trading Co., Inc.
BRIEF." The reason given was that "counsel for Mr. Jose vs. The Director of Patents, et al., L-8004, 30 May 1956;
P. Sta. Ana does not recall making any stipulation or Chung Te vs. Ng Kian Giab, et al.,
agreement of facts with the counsel of Mr. Florentino L-23791, 23 November 1966). In the case at bar, the
Maliwat on 9 August 1963." Opposition thereto was filed proof of date of first use (1953), earlier than that alleged
by Maliwat, asserting that the stenographer took down in respondent Maliwat's application (1962), can be no
notes on those things which were stated and uttered by less than clear and convincing because the fact was
the parties; that movant should have moved for stipulated and no proof was needed.
reconsideration in the Patent Office, instead of here in
Petitioner would confine the respondent to the use of the the present ruling under appeal is so devoid of basis in
mark FLORMANN to tailoring and haberdashery only, law as to amount to grave abuse of discretion warranting
but not on shoes, on the ground that petitioner had used reversal.
the name FLORMEN on shoes since 1959, while the
respondent used his mark on shoes only in 1962; but the Republic Act No. 166, as amended, provides:
Director ruled:
Sec. 4. . . . The owner of a trademark,
. . . I believe that it is now the common practice tradename or service-mark used to distinguish
among local tailors and haberdashers to branch his goods, business or services from the goods,
out into articles of manufacture which have, one business or services of others shall have the
way or another, some direct relationship with or right to register the same on the principal
appurtenance to garments or attire to complete register, unless it:
one's wardrobe such as belts, shoes,
handkerchiefs, and the like, . . . It goes without xxx     xxx     xxx
saying that shoes on one hand and shirts, pants
and jackets on the other, have the same
descriptive properties for purposes of our xxx     xxx     xxx
Trademark Law.
(d) Consists of or comprises a mark or
Modern law recognizes that the protection to which the tradename which resembles a mark or
owner of a trademark mark is entitled is not limited to tradename registered in the Philippines or a
guarding his goods or business from actual market mark or tradename previously used in the
competition with identical or similar products of the Philippines by another and not abandoned, as to
parties, but extends to all cases in which the use by a be likely, when applied to or used in connection
junior appropriator of a trademark or tradename is likely with the goods, business or services of the
to lead to a confusion of source, as where prospective applicant, to cause confusion or mistake or to
purchasers would be misled into thinking that the deceive purchasers;
complaining party has extended his business into the
field (see 148 ALR 56 et seq; 52 Am. Jur. 576) or is in xxx     xxx     xxx
any way connected with the activities of the infringer; or
when it forestalls the normal potential expansion of his Note that the provision does not require that the articles
business (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577). It is of manufacture of the previous user and the late user of
on this basis that the respondent Director of Patents the mark should possess the same descriptive properties
adverted to the practice "among local tailors and or should fall into the same categories as to bar the latter
haberdashers to branch out into articles of manufacture from registering his mark in the principal register (Chua
which have some direct relationship" . . . "to garments or Che vs. Phil. Patent Office, et al., L-18337, 30 Jan.
attire to complete one's wardrobe". Mere dissimilarity of 1965.4 citing Application of Sylvan Sweets Co., 205 F.
goods should not preclude relief where the junior user's 2nd, 207).5 Therefore, whether or not shirts and shoes
goods are not too different or remote from any that the have the same descriptive properties, or whether or not it
owner would be likely to make or sell; and in the present is the prevailing practice or the tendency of tailors and
case, wearing apparel is not so far removed from shoes haberdashers to expand their business into shoes
as to preclude relief, any more than the pancake flour is making, are not controlling. The meat of the matter is the
from syrup or sugar cream (Aunt Jemima Mills Co. vs. likelihood of confusion, mistake or deception upon
Rigney & Co., LRA 1918 C 1039), or baking powder from purchasers of the goods of the junior user of the mark
baking soda (Layton Pure Food Co. vs. Church & Co., and the goods manufactured by the previous user. Here,
182 Fed. 35), or cosmetics and toilet goods from ladies' the resemblance or similarity of the mark FLORMANN
wearing apparel and costume jewelry (Lady Esther Ltd. and the name FLORMEN and the likelihood of
vs. Lady Esther Corset Shoppe, 148 ALR 6). More confusion, one to the other, is admitted; therefore, the
specifically, manufacturers of men's clothing were prior adopter, respondent Maliwat, has the better right to
declared entitled to protection against the use of their the use of the mark.
trademark in the sale of hats and caps [Rosenberg Bros.
vs. Elliott, 7 Fed. (2d) 962] and of ladies shoes (Forsythe FOR THE FOREGOING REASONS, the appealed
& Co. vs. Forsythe Shoe Corp., 254 NYS 584). In all decision is hereby affirmed, with costs against the
these cases, the courts declared the owner of a petitioner.
trademark from the first named goods entitled to exclude
use of its trademark on the related class of goods above-
referred to.

It may be that previously the respondent drew a closer

distinction among kinds of goods to which the use of
similar marks could be applied; but it can not be said that
 are the words 'POSITIVELY FINER' in
light gold. In the trademark for
underwear (Exhibit 'R'), the word
'HICKOK' is also in red with white
background in the middle of two
branches of laurel in dark gold with
similar ribbons and the words
'POSITIVELY FINER' in dark gold. And
in the trademark for briefs (Exhibit 'S'),
the word 'HICKOK' is in white but with
red background in the middle of two
branches of laurel, the leaves being in
dark gold with white edges, and with
similar ribbon and words 'POSITIVELY
FINER' in dark gold. In contrast, in
respondent-appellant's trademark
(Exhibit 'J'), the word 'HICKOK' is in
white with gold background between the
two branches of laurel in red, with the
word 'SHOES' also in red below the
G.R. No. L-44707 August 31, 1982 word 'HICKOK'.ït¢@lFº The ribbon is in
red with the words 'QUALITY AT YOUR
HICKOK MANUFACTURING CO., INC., petitioner, FEET,' likewise in red.
vs.
COURT OF APPEALS ** and SANTOS LIM BUN While the law does not require that the
LIONG, respondents. competing trademarks be Identical, the
two marks must be considered in their
TEEHANKEE, J.:1äwphï1.ñët entirety, as they appear in the respective
labels, in relation to the goods to which
The Court affirms on the strength of controlling doctrine they are attached.
as reaffirmed in the companion case of Esso Standard
Eastern Inc. vs. Court of Appeals  1 promulgated also on The case of H.E. Heacock Co. vs.
this date and the recent case of Philippine Refining Co., American Trading Co., 56 Phil. 763,
Inc. vs. Ng Sam and Director of Parents  2 the appealed cited by petitioner - appellee, is hardly
decision of the Court of Appeals reversing the patent applicable here, because the defendant
director's decision and instead dismissing petitioner's in that case imported and sold
petition to cancel private respondent's registration of the merchandise which are very similar to,
trademark of HICKOK for its Marikina shoes as against and precisely of the same designs as,
petitioner's earlier registration of the same trademark for that imported and sold by the plaintiff. ...
its other non-competing products.
In the recent case of Acoje Mining Co.,
On the basis of the applicable reasons and Inc. vs. Director of Patents, 38 SCRA
considerations extensively set forth in the above-cited 480, 482-483, the Supreme Court stated
controlling precedents and the leading case of Acoje - 1äwphï1.ñët
Mining Co., Inc. vs. Director of Patents  3 on which the
appellate court anchored its decision at bar, said Can it be said then that
decision must stand affirmed, as follows: 1äwphï1.ñët petitioner's application
would be likely to cause
An examination of the trademark of confusion or mistake on
petitioner-appellee and that of registrant- the part of the buying
appellant convinces us that there is a public? The answer
difference in the design and the coloring should be in the
of, as well as in the words on the negative. It does not
ribbons, the two trademarks. defy common sense to
assert that a purchaser
In petitioner-appellee's trademark for would be cognizant of
handkerchiefs (Exhibit 'Q'), the word the product he is
'HICKOK' is in red with white buying. There is quite a
background in the middle of two difference between soy
branches of laurel in light gold. At the sauce and edible oil. If
lower part thereof is a ribbon on which one is in the market for
 the former, he is not It is established doctrine, as held in the above-cited
likely to purchase the cases, that "emphasis should be on the similarity of the
latter just because on products involved and not on the arbitrary classification
the trademark LOTUS. or general description of their properties or
Even on the rare characteristics" 4 and that "the mere fact that one person
occasion that a mistake has adopted and used a trademark on his goods does
does occur, it can easily not prevent the adoption and use of the same trademark
be rectified. Moreover, by others on unrelated articles of a different
there is no denying that kind." 5 Taking into account the facts of record that
the possibility of petitioner, a foreign corporation registered the trademark
confusion is remote for its diverse articles of men's wear such as wallets,
considering petitioner's belts and men's briefs which are all manufactured here
trademark being in in the Philippines by a licensee Quality House, Inc.
yellow and red while (which pays a royalty of 1-1/2 % of the annual net sales)
that of the Philippine but are so labelled as to give the misimpression that the
Refining Company said goods are of foreign (stateside) manufacture and
being in green and that respondent secured its trademark registration
yellow, and the much exclusively for shoes (which neither petitioner nor the
smaller size of licensee ever manufactured or traded in) and which are
petitioner's trademark. clearly labelled in block letters as "Made in Marikina,
When regard is had for Rizal, Philippines," no error can be attributed to the
the principle that the appellate court in upholding respondent's registration of
two trademarks in their the same trademark for his unrelated and non-competing
entirety as they appear product of Marikina shoes. 6
in their respective labels
should be considered in ACCORDINGLY, the petition is dismissed and the
relation to the goods appealed judgment of the Court of Appeals is hereby
advertised before affirmed.
registration could be
denied, the conclusion Melencio-Herrera, Plana, Relova and Gutierrez, Jr., JJ.,
is inescapable that concur.1äwphï1.ñët
respondent Director
ought to have reached a
different conclusion.
Petitioner has
successfully made out a
case for registration.

From the statements of the Supreme

Court in the two cases aforementioned,
we gather that there must be not only
resemblance between the trademark of
the plaintiff and that of the defendant,
but also similarity of the goods to which
the two trademarks are respectively
attached.

Since in this case the trademark of

petitioner-appellee is used in the sale of
leather wallets, key cases, money folds
made of leather, belts, men's briefs,
neckties, handkerchiefs and men's
socks, and the trademark of registrant-
appellant is used in the sale of shoes,
which have different channels of trade,
the Director of Patents, as in the case
of Acoje Mining Co., Inc. vs. Director of
Patents, supra, 'ought to have reached a
different conclusion.
 cream shave, after shave/shower lotion, hair spray, and
hair shampoo (page 236, Rollo), respondent Co Beng
Kay of Webengton Garments Manufacturing applied for
registration of the disputed emblem "BRUTE" for briefs.
Opposition raised by petitioner anchored on similarity
with its own symbol and irreparable injury to the
business reputation of the first user was to no avail.
When the legal tussle was elevated to respondent court,
Justice Gopengco remarked that:

Indeed, a look at the marks "BRUT,"

"BRUT 33" and "BRUTE" shows that
such marks are not only similar in
appearance but they are even similar in
sound and in the style of presentation. It
is reasonable to believe that this
similarity is sufficient to cause confusion
and even mistake and deception in the
buying public as to the origin for source
of the goods bearing such trademarks. It
should be considered that, although the
mark "BRUTE" was applied for, only for
briefs, yet such product has the same
outlet — such as department stores and
G.R. No. 71189 November 4, 1992 haberdashery stores in the Philippines
— as the goods covered by the
FABERGE, INCORPORATED, petitioner, trademarks "BRUT" and "BRUTE 33" so
vs. that such confusion, mistake or
THE INTERMEDIATE APPELLATE COURT and CO deception is not unlikely to occur. The
BENG KAY, respondents. argument of appellee, that in modern
marketing, goods of similar use are
grouped in one section of the
supermarket and thus it is unlikely that
cosmetics be mixed with textile or
MELO, J.: wearing apparel, is hardly convincing
enough, for a look at the modern
The Director of Patents authorized herein private department stores shows that
respondent Co Beng Kay to register the trademark merchandise intended for the use of
"BRUTE" for the briefs manufactured and sold by his men are now placed in a section which
Corporation in the domestic market vis-a-vis petitioner's is then labelled "Men's Accessories." It
opposition grounded on similarity of said trademark with is not unlikely, therefore, that in said
petitioner's own symbol "BRUT" which it previously section, appellant's products, which are
registered for after shave lotion, shaving cream, cosmetics for men's use, be placed
deodorant, talcum powder, and toilet soap. Thereafter, beside appellee's product, and cause
respondent court, through Justice Gopengco with such confusion or mistake as to the
Justices Patajo and Racela, Jr. concurring, was initially source of the goods displayed in the
persuaded by petitioner's plea for reversal directed section. To avoid this, the Director of
against the permission granted by the Director of Patents held:
Patents, but the decision of the Second Special Cases
Division handed down on April 29, 1983 was later The marks KEYSTON
reconsidered in favor of herein private respondent (pp. (on shirts) and
46-54; pp. 34-36, Rollo). KEYSTONE (on shoes
and slippers), the latter
Hence, the petition at bar assailing the action of having been previously
respondent court in affirming the ruling of the Director of registered are clearly
Patents (Page 7, Petition; Page 16, Rollo). similar in sound and
appearance that
In essence, it appears that in the course of marketing confusion or mistake, or
petitioner's "BRUT" products and during the pendency of deception among
its application for registration of the trademark "BRUT 33 purchasers as to origin
and DEVICE" for antiperspirant, personal deodorant, and source of goods is
likely to occur. Shirts
 and shoes are both another, the application
wearing apparel and should be rejected and
there is no gainsaying dismissed outright, even
the truth that these without any opposition
items are ordinarily on the part of the owner
displayed in the same and user of a previously
manner and sold registered label or
through the same retail trademark, this not only
outlets such as to avoid confusion on
department and the part of the public,
haberdashery stores in but also to protect an
the Philippines. (Ex- already used and
Parte Keystone registered trademark
Garment Manufacturing and an established
Co., Decision No. 245 goodwill. (Chuanchow
of the Director of Soy & Canning Co. vs.
Patents, January 25, Dir. of Patents and
1963.) Villapanta, 108 Phil.
833, 836.)
It is also not disputed that on account of
the considerable length of time that The test of confusing similarity which
appellant has marketed its products would preclude the registration of a
bearing the trademarks "BRUT" and trademark is not whether the challenged
"BRUT 33," and its maintenance of high mark would actually cause confusion or
quality of its products through the years, deception of the purchasers but whether
appellant has earned and established the use of such mark would likely cause
immense goodwill among its customers. confusion or mistake on the part of the
We agree with appellant that should buying public. In short, the law does not
appellee be allowed to use the require that the competing marks must
trademark "BRUTE" on the briefs be so identical as to produce actual
manufactured by him, appellee would be error or mistakes. It would be sufficient,
cashing in on the goodwill already for purposes of the law, that the
established by appellant, because, as similarity between the two labels be
already stated above, appellant's such that there is a possibility or
cosmetics and appellee's briefs are not likelihood of the purchaser of the older
entirely unrelated since both are brand mistaking the newer brand for it.
directed to the fashion trade and in the (Gopengco, Mercantile Law
marketing process, they may find Compendium, 1983 ed., p. 684; Acoje
themselves side by side in the "Men's Mining Co., Inc. vs. Director of Patents,
Accessories Section" of the market, thus 38 SCRA 480). (pp. 3-6, Decision; pp.
easily leading the buying public to 48-51, Rollo).
believe that such briefs come from the
same source as appellant's cosmetics, On June 5, 1984, respondent's Motion for
and be induced to buy said briefs, to the Reconsideration merited the nod of approval of the
undue advantage of appellee. Again, if appellate court brought about by private respondent's
after purchasing such briefs, the public suggestion that the controlling ruling is that laid down
finds them to be of non-competitive in Philippine Refining Co., Inc. vs.  Ng Sam (115 SCRA
quality, or not of the high quality 472 [1982]), ESSO Standard Eastern, Inc. vs.  Court of
expected of appellant's products, then Appeals (116 SCRA 336 [1982]); Hickok Manufacturing
appellant's reputation and goodwill will Co., Inc.  vs. CA  (116 SCRA 378 [1982]), and Acoje
be ruined, to its damage and prejudice. Mining Co., Inc.  vs. Director of Patents (38 SCRA 480
Thus, for the protection of the goodwill [1971], to the effect that the identical trademark can be
already established by a party, the used by different manufacturers for products that are
Supreme Court held: non-competing and unrelated. (pp. 34-36, Rollo)

When one applies for Petitioner is of the impression that respondent court
the registration of a could not have relied on the rulings of this Court in
trademark or label the ESSO and the PRC cases when the original decision
which is almost the was reconsidered since respondent court already
same or very closely expressed the opinion in the text of the previous
resembles one already discourse that the facts in said cases "are not found in
used and registered by
the case at bar" (Page 12, Brief for the Petitioner, Page unmistakably suggest that the product
202, Rollo). Petitioner likewise emphasis American contained in the box container is that of
jurisprudential doctrines to the effect that sale of a man's brief. The fact therefore is
cosmetics and wearing apparel under similar marks is obvious that the goods upon which the
likely to cause confusion. Instead of applying conflicting trademarks are used are
the ESSO, PRC  and Hickok cases, petitioner continues clearly different and the intended
to asseverate, the rule as announced in Ang purpose of such goods are likewise not
vs.  Teodoro  (74 Phil. 50 [1942]) as reiterated the same. Accordingly, a purchaser who
in Sta.  Ana vs. Maliwat and Evalle (24 SCRA (1968) is out in the market for the purpose of
101) should be applied. buying respondent's BRUTE brief would
definitely be not mistaken or misled into
In additional, it seems that petitioner would want this buying instead opposer's BRUT after
Court to appreciate petitioner's alleged application for shave lotion or deodorant.
registration of the trademark "BRUT 33 DEVICE" for
briefs as an explicit proof that petitioner intended to Additional, the meaning or connotation
expand its mark "BRUT" to other goods, following the of the bare word marks of opposer,
sentiment expressed by Justice J.B.L. Reyes in BRUT, and BRUTE of respondent, are
the Sta.  Ana case (supra, at page 1025) that relief is clearly different and not likely to be
available where the junior user's goods are not remote confused with each other. BRUT simply
from any product that the senior user would be likely to means "dry", and also, "to browse";
make or sell (Pages 26-27, Brief for the Petitioner). while BRUTE means "ferocious,
sensual", and in Latin, it signifies
Besides, petitioner insists that in view of the repeal of "heavy". Gleaned from the respective
Republic Act No. 166 (which advocated the related meanings of the two marks in question,
goods theory) by Republic Act No. 666 which deleted the they both suggest the resultant effects of
phrase found in the old law that the merchandise must the application of the products, upon
be substantially the same descriptive properties, which the said trademarks are
respondent Court should have heeded the employed, which fact all the more
pronouncement in the Ang  case that there can be unfair renders confusion or deception of
competition even if the goods are noncompeting purchasers a remote possibility.
(supra, at page 54).
The products covered by petitioner's
On the other hand, private respondent echoes the trademarks "BRUT" and "BRUT 33 &
glaring difference in physical appearance of its products Device" enjoying its so-called "goodwill"
with petitioner's own goods by stressing the observations are after-shave lotion, shaving cream,
of the Director of Patents on May 3, 1978: deodorant, talcum powder, toilet soap,
anti-perspirant, personal deodorant,
cream shave, after shave/shower lotion,
Considered in their entireties as
hair spray and hair shampoo. Petitioner
depicted in the parties' sample box and
has never applied for, registered nor
can containers, the involved trademarks
used its trademarks for briefs in
are grossly different in their overall
commerce or trade in the Philippines.
appearance that even at a distance a
Private respondent seeks to register his
would-be purchaser could easily
trademark "BRUTE" only for briefs which
distinguish what is BRUTE brief and
is a product non-competitive to and
what is BRUT after shave lotion, lotion
entirely unrelated with petitioner's
and the like. Opposer's mark BRUT or
aforementioned products. (pp. 3-4, Brief
BRUT 33, as shown in Exhibit "6", is
for the Respondent)
predominantly colored green with a blue
and white band at the middle portion of
the container. Also appearing therein in in order to impress upon Us that the controlling norm is
bold letters is opposer's name the comparison of the trademarks in their entirely as they
"FABERGE" and a notation "Creme appear in their labels to determine whether there is
Shave". On the other hand, confusing similarity.
respondent's mark as shown in Exh. "4-
A" prominently displays the Moreover, private respondent asserts that briefs and
representation of a muscular man, cosmetics do not belong to the same class nor do they
underneath of which appears the have the same descriptive properties such that the use
trademark BRUTE with a notation "Bikini of a trademark on one's goods does not prevent the
Brief" . . . Equally visible at the other adoption and use of the same trademark by others on
portions of respondent's labels are the unrelated articles of a different nature in line with the
pictorial representation of "briefs" which ruling of this Court in Hickok Manufacturing Co.,
Inc. vs.  Court of Appeals (116 SCRA 387 [1982]). Republic of the Philippines. (As
Furthermore, respondent belies petitioner's claim that amended by Rep. Act No. 865).
the latter had applied for registration of the trademark
"BRUT 33 DEVICE" for briefs since the documents on Sec. 2-A. Ownership of trade-marks,
file with the Director of Patents attached to respondent's trade-names and service-marks; how
legal Brief does not include the so-called application by acquired. — Anyone who lawfully
petitioner of the alleged trademark for briefs. produces or deals in merchandise of any
kind or who engages in any lawful
To the legal query of whether private respondent may business or who renders any lawful
appropriate the trademark "BRUTE" for the briefs it service in commerce, by actual use
manufactures and sells to the public albeit petitioner had thereof in manufacture or trade, in
previously registered the symbol "BRUT" and "BRUT 33" business, and in the service rendered,
for its own line of times, it is but apropos to shift Our may appropriate to his exclusive use a
attention to the pertinent provisions of the new Civil trade-mark, a trade-name, or a service-
Code vis-a-vis  Republic Act No. 166, as amended, the mark not so appropriated by another, to
special law patterned after the United States Trademark distinguish his merchandise, business or
Act of 1946 (Director of Patents, Circular Release No. service from the merchandise, business
36, 45 O.G. 3704; Martin, Commentaries and or services of others. The ownership or
Jurisprudence on the Philippine Commercial Laws, 1986 possession of a trade-mark, trade-name,
Revised Edition, Volume 2, page 489), thus: service-mark, heretofore or hereafter
appropriated, as in this section provided,
Art. 520. A trade-mark or trade-name shall be recognized and protected in the
duly registered in the proper government same manner and to the same extent as
bureau or office is owned by and are other property rights known to the
pertains to the person, corporation, or law. (As inserted by Sec. 1 of Rep. Act
firm registering the same, subject to the 638).
provisions of special laws.
xxx xxx xxx
Art. 521. The goodwill of a business is
property, and may be transferred Sec. 4. Registration of trade-marks,
together with the right to use the name trade-names and service-marks on the
under which the business is conducted. principal register. —

Art. 522. Trade-marks and trade-names . . . The owner of trademark, trade-name

are governed by special laws. or service-mark used to distinguish his
goods, business or services from the
xxx xxx xxx goods, business or services of others
shall have right to register the same on
the principal register, unless it:
Sec. 2. What are registrable. — Trade-
marks, trade-names, and service-marks
owned by persons, corporations, xxx xxx xxx
partnerships or associations domiciled in
the Philippines and by persons, 4(d) Consists of or comprises a mark or
corporations, partnerships or trade-name which so resembles a mark
associations domiciled in any foreign or trade-name registered in the
country may be registered in Philippines or a mark or trade-name
accordance with the provisions of this previously used in the Philippines by
Act; Provided, That said trade-marks, another and not abandoned, as to be
trade-names, or service-marks, are likely, when applied to or used in
actually in use in commerce and connection with the goods, business or
services not less than two months in the services of the applicant, to cause
Philippines before the time the confusion or mistake or to deceive
applications for registration are filed: purchasers.
And provided, further, That the country
of which the applicant for registration is xxx xxx xxx
a citizen grants by law substantially
similar privileges to citizens of the Sec. 11. Issuance and contents of the
Philippines, and such fact is officially certificate.  — Certificates of registration
certified, with a certified true copy of the shall be issued in the name of the
foreign law translated into the English Republic of the Philippines under the
language, by the government of the
 seal of the Patent Office, and shall be applied to the documentary evidence adduced by
signed by the Director, and a record petitioner, the certificate of registration issued by the
thereof together with a copy of the Director of Patents can confer upon petitioner the
specimen or facsimile and the statement exclusive right to use its own symbol only to those goods
of the applicant, shall be kept in books specified in the certificate, subject to any conditions and
for that purpose. The certificate shall limitations stated therein. This basic point is perhaps the
reproduce the specimen or facsimile of unwritten rationale  of Justice Escolin in Philippine
the mark or trade-name, contain the Refining Co., Inc. vs.  Ng Lam (115 SCRA 472 [1982]),
statement of the applicant and state that when he stressed the principle enunciated by the United
the mark or trade-name is registered States Supreme Court in American Foundries vs.
under this Act, the date of the first use in Robertson (269 U.S. 372, 381, 70 L ed 317, 46 Sct. 160)
commerce or business,  the particular that one who has adopted and used a trademark on his
goods or services for which it is goods does not prevent the adoption and use of the
registered, the number and date of the same trademark by other for products which are of
registration, the term thereof, the date different description. Verily, this Court had the occasion
on which the application for registration to observe in the 1966 case of George W. Luft Co.,
was received in the Patent Office, a Inc. vs.  Ngo Guan  (18 SCRA 944 [1966]) that no
statement of the requirement that in serious objection was posed by the petitioner therein
order to maintain the registration, since the applicant utilized the emblem "Tango" for no
periodical affidavits of use within the other product than hair pomade in which petitioner does
specified times hereinafter in section not deal.
twelve provided, shall be filed, and such
other data as the rules and regulations This brings Us back to the incidental issue raised by
may from time to time prescribe. petitioner which private respondent sought to belie as
regards petitioner's alleged expansion of its business. It
xxx xxx xxx may be recalled that petitioner claimed that it has a
pending application for registration of the emblem
Sec. 20. Certificate of registration prima "BRUT 33" for briefs (page 25, Brief for the Petitioner;
facie evidence of validity.  — A certificate page 202, Rollo) to impress upon Us the Solomonic
of registration of a mark or trade-name wisdom imparted by Justice JBL Reyes in Sta. Ana
shall be prima facie evidence of the vs.  Maliwat (24 SCRA 1018 [1968]), to the effect that
validity of the registration, the dissimilarity of goods will not preclude relief if the junior
registrant's ownership of the mark or user's goods are not remote from any other product
trade-name, and of the registrant's which the first user would be likely to make or sell (vide,
exclusive right to use the same in at page 1025). Commenting on the former provision of
connection with the goods, business or the Trademark Law now embodied substantially under
services specified in the Section 4(d) of Republic Act No. 166, as amended, the
certificate, subject to any conditions and erudite jurist opined that the law in point "does not
limitations stated therein. require that the articles of manufacture of the previous
user and late user of the mark should possess the same
descriptive properties or should fall into the same
Having thus reviewed the laws applicable to the case
categories as to bar the latter from registering his mark
before Us, it is not difficult to discern from the foregoing
in the principal register." (supra at page 1026).
statutory enactments that private respondent may be
permitted to register the trademark "BRUTE" for briefs
produced by it notwithstanding petitioner's vehement Yet, it is equally true that as aforesaid, the protective
protestations of unfair dealings in marketing its own set mantle of the Trademark Law extends only to the goods
of items which are limited to: after-shave lotion, shaving used by the first user as specified in the certificate of
cream, deodorant, talcum powder and toilet soap. In as registration following the clear message conveyed by
much as petitioner has not ventured in the production of section 20.
briefs, an item which is not listed in its certificate of
registration, petitioner can not and should not be allowed How do We now reconcile the apparent conflict between
to feign that private respondent had invaded petitioner's Section 4(d) which was relied upon by Justice JBL
exclusive domain. To be sure, it is significant that Reyes in the Sta.  Ana case and Section 20? It would
petitioner failed to annex in its Brief the so-called seem that Section 4(d) does not require that the goods
"eloquent proof that petitioner indeed intended to expand manufactured by the second user be related to the
its mark "BRUT" to other goods" (Page 27, Brief for the goods produced by the senior user while Section 20
Petitioner; Page 202, Rollo). Even then, a mere limits the exclusive right of the senior user only to those
application by petitioner in this aspect does not suffice goods specified in the certificate of registration. But the
and may not vest an exclusive right in its favor that can rule has been laid down that the clause which comes
ordinarily be protected by the Trademark Law. In short, later shall be given paramount significance over an
paraphrasing Section 20 of the Trademark Law as anterior proviso upon the presumption that it expresses
the latest and dominant purpose. (Graham Paper On appeal, respondent Court of Appeals
Co.  vs. National Newspaper Asso. (Mo. App.) 193 S.W. found that there was no trademark
1003; Barnett vs. Merchant's L. Ins. Co.,  87 Okl. infringement and dismissed the
42; State ex nel Atty. Gen.  vs. Toledo, 26 N.E., p. 1061; complaint. Reconsideration of the
cited by Martin, Statutory Construction Sixth ed., 1980 decision having been denied, petitioner
Reprinted, p. 144). It ineluctably follows that Section 20 appealed to this court by way
is controlling and, therefore, private respondent can of certiorari to reverse the decision of
appropriate its symbol for the briefs it manufactures the Court of Appeals and to reinstate the
because as aptly remarked by Justice Sanchez decision of the Court of First Instance of
in Sterling Products International Inc.  vs. Farbenfabriken Manila. The Court finds no ground for
Bayer  (27 SCRA 1214 [1969]): granting the petition.

Really, if the certificate of registration The law defines infringement as the use
were to be deemed as including goods without consent of the trademark owner
not specified therein, then a situation of any "reproduction, counterfeit, copy or
may arise whereby an applicant may be colorable imitation of any registered
tempted to register a trademark on any mark or tradename in connection with
and all goods which his mind may the sale, offering for sale, or advertising
conceive even if he had never intended of any goods, business or services on or
to use the trademark for the said goods. in connection with which such use is
We believe that such omnibus likely to cause confusion or mistake or to
registration is not contemplated by our deceive purchasers or others as to the
Trademark Law. (1226) source or origin of such goods or
services, or identity of such business; or
Withal, judging from the physical attributes of petitioner's reproduce, counterfeit, copy or colorable
and private respondent's products, there can be no imitate any director's decision on the
doubt that confusion or the likelihood of deception to the question of "May petitioner Acoje Mining
average purchaser is unlikely since the goods are non- Company register for the purpose of
competing and unrelated. In upholding registration of the advertising its product, soy sauce, the
brand "ESSO for cigarettes inspite previous trademark LOTUS, there being already
appropriation of the same mark "ESSO" for petroleum in existence one such registered in favor
products, then Justice, later Chief Justices Teehankee of the Philippine Refining Company for
in Esso Standard Eastern, Inc.  vs. Court of its product, edible oil, it being further
Appeals (116 SCRA 336 [1982] said: shown that the trademark applied for is
in smaller type, colored differently, set
on a background which is dissimilar as
The Court affirms on the basis of
to yield a distinct appearance?" and
controlling doctrine the appealed
ordered the granting of petitioner's
decision of the Court of Appeals
application for registration ruling that
reversing that of the Court of First
"there is quite a difference between soy
Instance of Manila and dismissing the
sauce and edible oil. If one is in the
complaint filed by herein petitioner
market for the former, he is not likely to
against private respondent for trade
purchase the latter just because of the
infringement for using petitioner's
trademarks LOTUS" and "when regard
trademark ESSO, since it clearly
is had for the principle that the two
appears that the goods on which the
trademark in their entirely as they
trademark ESSO is used by respondent
appear in their respective labels should
is non-competing and entirely unrelated
be considered in relation to the goods
to the products of petitioner so that there
advertised before registration could be
is no likelihood of confusion or deception
denied, the conclusion is inescapable
on the part of the purchasing public as
that respondent Director ought to have
to the origin or source of the goods.
reached a different conclusion."
xxx xxx xxx
By the same token, in the recent case of
Philippine Refining Co., Inc. v. Ng Sam
The trial court, relying on the old cases and Director of Patents, the Court
of Ang vs.  Teodoro and Arce & Sons, upheld the patent director's registration
Inc. vs.  Selecta Biscuit Company, of the same trademark CAMIA for
referring to related products, decided in therein respondent's product of ham
favor of petitioner and ruled that notwithstanding its already being used
respondent was guilty of infringement of by therein petitioner for a wide range of
trademark. products: lard; butter, cooking oil,
abrasive detergents, polishing material are of the same class or line of
and soap of all kinds. The Court, after merchandise which are non-competing
noting that the same CAMIA trademark with respondent's product of cigarettes,
had been registered by two other which as pointed out in the appealed
companies, Everbright Development judgment is beyond petitioner's "zone of
Company and F.E. Zuellig, Inc. for their potential or natural and logical
respective products of thread and yarn expansion." When a trademark is used
(for the former) and textiles, by a party for a product in which the
embroideries and laces (for the latter) other party does not deal, the use of the
ruled that "while ham and some of the same trademark on the latter's product
products of petitioner are classified cannot be validly objected to.
under Class 47 (Foods and Ingredients
of Food), this alone cannot serve as the xxx xxx xxx
decisive factor in the resolution of
whether or not they are related goods. Respondent court correctly ruled that
Emphasis should be on the similarity of considering the general appearances of
the arbitrary classification or general each mark as a whole, the possibility of
description of their properties or any confusion is unlikely. A comparison
characteristics. The Court, therefore, of the labels of the samples of the goods
concluded that "In fine, We hold that the submitted by the parties shows a great
businesses of the parties are many differences on the trademark
noncompetitive and their products so used. As pointed out by respondent
unrelated that the use of identical court in its appealed decision, "(A)
trademarks is not likely to give rise to witness for the plaintiff, Mr. Buhay,
confusion, much less cause damage to admitted that the color of the "ESSO"
petitioner. used by the plaintiff for the oval design
where the blue word ESSO is contained
In the situation before us, the goods are is the distinct and unique kind of blue. In
obviously different from each other — his answer to the trial court's question,
with "absolutely no iota of similitude" as Mr. Buhay informed the court that the
stressed in respondent court's judgment. plaintiff never used its trademark on any
They are so foreign to each other as to product where the combination of colors
make it unlikely that purchasers would is similar to the label of the Esso
think that petitioner is the manufacturer cigarettes," and "Another witness for the
of respondent' goods. The mere fact that plaintiff, Mr. Tengco, testified that
one person has adopted and used a generally, the plaintiff's trademark
trademark on his goods does not comes all in either red, white, blue or
prevent the adoption and use of the any combination of the three colors. It is
same trademark by others on unrelated to be pointed out that not even a shade
articles of a different kind. of these colors appears on the
trademark of the appellant's cigarette.
Petitioner uses the trademark ESSO The only color that the appellant uses in
and holds certificate registration of the its trademark is green. (339; 341-346)
trademark for petroleum products,
including aviation gasoline, grease, The glaring discrepancies between the two products had
cigarette lighter fluid and other various been amply portrayed to such an extent that indeed, "a
products such as plastics, chemicals, purchaser who is out in the market for the purpose of
synthetics, gasoline solvents, kerosene, buying respondent's BRUTE brief would definitely be not
automotive and industrial fuel, bunker mistaken or misled into buying BRUT after shave lotion
fuel, lubricating oil, fertilizers, gas or deodorant" as categorically opined in the decision of
alcohol, insecticides and the "ESSO the Director of Patents relative to the inter-partes case.
Gasul" burner, while respondent's (supra, at page 7).
business is solely for the manufacture
and sale of the unrelated product of Petitioner's bid to persuade Us into accepting the
cigarettes. The public knows too well doctrines announced in the aforementioned cases
that petitioner deals solely with of Sta. Ana vs. Maliwat  and Ang vs.  Teodoro  hardly
petroleum products that there is no inspire belief. In Sta Ana, it was admitted that the marks
possibility that cigarettes with ESSO were confusingly similar which is not so in the case at
brand will be associated with whatever bar. In the 1942 case of Ang vs. Teodoro, Justice
good name petitioner's ESSO trademark Ozaeta noted that pants and shirts are similar to shoes
may have generated. Although and slippers within the meaning of Sections 3, 7, 11, 13
petitioner's products are numerous, they
and 20 of Act No. 666 which was the old Trademark Law (IPO) which rejected herein respondent MacJoy
enacted on March 6, 1903 prior to the present law. FastFood Corporation’s application for
Obviously, the conclusion reached by the  ponente  in registration of the trademark "MACJOY &
the Ang case may not now be utilized by analogy to the DEVICE"; and
case at bar due to variance in the factual and legal
milieu. Neither can we agree with petitioner that the 2. Resolution dated 12 November 2004 2 denying
ruling in La Chemise Lacoste, S.A. vs.  Fernandez (129 the petitioner’s motion for reconsideration.
SCRA 373 [1984]) is applicable to the controversy at
hand. The case adverted to by petitioner involved the As culled from the record, the facts are as follows:
same mark for the same class of shirts manufactured by
the parties therein.
On 14 March 1991, respondent MacJoy Fastfood
Corporation, a domestic corporation engaged in the sale
It would appear that as a consequence of this discourse, of fast food products in Cebu City, filed with the then
there still remains hanging in mid-air the unanswered Bureau of Patents, Trademarks and Technology
puzzle as to why an aspiring commercial enterprise, Transfer (BPTT), now the Intellectual Property Office
given the infinite choices available to it of names for the (IPO), an application, thereat identified as Application
intend product, would select a trademark or tradename Serial No. 75274, for the registration of the trademark
which somewhat resembles an existing emblem that had "MACJOY & DEVICE" for fried chicken, chicken
established goodwill. Our opinion hereinbefore barbeque, burgers, fries, spaghetti, palabok, tacos,
expressed could even open the floodgates to similar sandwiches, halo-halo and steaks under classes 29 and
incursions in the future when we interpreted Section 20 30 of the International Classification of Goods.
of the Trademark Law as an implicit permission to a
manufacturer to venture into the production of goods and
allow that producer to appropriate the brand name of the Petitioner McDonald’s Corporation, a corporation duly
senior registrant on goods other than those stated in the organized and existing under the laws of the State of
certificate of registration. Delaware, USA, filed a verified Notice of
Opposition3 against the respondent’s application
claiming that the trademark "MACJOY & DEVICE" so
But these nagging and disturbing points cannot win the resembles its corporate logo, otherwise known as the
day for petitioner, although We must hasten to add that Golden Arches or "M" design, and its marks
in the final denouement, Our apprehensions in this "McDonalds," McChicken," "MacFries," "BigMac,"
regard are not entirely irreversible since Section 4(d) and "McDo," "McSpaghetti," "McSnack," and "Mc,"
20 of the law in question may still be subjected to (hereinafter collectively known as the MCDONALD’S
legislative modification in order to protect the original marks) such that when used on identical or related
user of the symbol. goods, the trademark applied for would confuse or
deceive purchasers into believing that the goods
WHEREFORE, the petition is hereby DISMISSED originate from the same source or origin. Likewise, the
without pronouncement as to costs. petitioner alleged that the respondent’s use and adoption
in bad faith of the "MACJOY & DEVICE" mark would
SO ORDERED. falsely tend to suggest a connection or affiliation with
petitioner’s restaurant services and food products, thus,
constituting a fraud upon the general public and further
cause the dilution of the distinctiveness of petitioner’s
registered and internationally recognized MCDONALD’S
G.R. No. 166115             February 2, 2007
marks to its prejudice and irreparable damage. The
application and the opposition thereto was docketed as
McDONALD’S CORPORATION, Petitioner, Inter Partes Case No. 3861.
vs.
MACJOY FASTFOOD CORPORATION, Respondent.
Respondent denied the aforementioned allegations of
the petitioner and averred that it has used the mark
DECISION "MACJOY" for the past many years in good faith and has
spent considerable sums of money for said mark’s
GARCIA, J.: extensive promotion in tri-media, especially in Cebu City
where it has been doing business long before the
In this petition for review on certiorari under Rule 45 of petitioner opened its outlet thereat sometime in 1992;
the Rules of Court, herein petitioner McDonald’s and that its use of said mark would not confuse affiliation
Corporation seeks the reversal and setting aside of the with the petitioner’s restaurant services and food
following issuances of the Court of Appeals (CA) in CA- products because of the differences in the design and
G.R. SP No. 57247, to wit: detail of the two (2) marks.

1. Decision dated 29 July 20041 reversing an In a decision4 dated December 28, 1998, the IPO,
earlier decision of the Intellectual Property Office ratiocinating that the predominance of the letter "M," and
the prefixes "Mac/Mc" in both the "MACJOY" and the differences in the device, letters and marks in the
"MCDONALDS" marks lead to the conclusion that there trademark sought to be registered. The IPO brushed
is confusing similarity between them especially since aside and ignored the following irrefutable facts and
both are used on almost the same products falling under circumstances showing differences between the marks
classes 29 and 30 of the International Classification of of MACJOY and MCDONALD’S. They are, as averred by
Goods, i.e., food and ingredients of food, sustained the the petitioner [now respondent]:
petitioner’s opposition and rejected the respondent’s
application, viz: 1. The word "MacJoy" is written in round script
while the word "McDonald’s" is written in single
WHEREFORE, the Opposition to the registration of the stroke gothic;
mark MACJOY & DEVICE for use in fried chicken and
chicken barbecue, burgers, fries, spaghetti, palabok, 2. The word "MacJoy" comes with the picture of
tacos, sandwiches, halo-halo, and steaks is, as it is a chicken head with cap and bowtie and wings
hereby, SUSTAINED. Accordingly, Application Serial No. sprouting on both sides, while the word
75274 of the herein Respondent-Applicant is "McDonald’s" comes with an arches "M" in gold
REJECTED. colors, and absolutely without any picture of a
chicken;
Let the filewrapper of MACJOY subject matter of this
case be sent to the Administrative, Financial and Human 3. The word "MacJoy" is set in deep pink and
Resources Development Bureau for appropriate action in white color scheme while "McDonald’s" is written
accordance with this Decision, with a copy to be in red, yellow and black color combination;
furnished the Bureau of Trademarks for information and
to update its record. 4. The façade of the respective stores of the
parties are entirely different. Exhibits 1 and 1-A,
SO ORDERED. show that [respondent’s] restaurant is set also in
the same bold, brilliant and noticeable color
In time, the respondent moved for a reconsideration but scheme as that of its wrappers, containers,
the IPO denied the motion in its Order 5 of January 14, cups, etc., while [petitioner’s] restaurant is in
2000. yellow and red colors, and with the mascot of
"Ronald McDonald" being prominently displayed
Therefrom, the respondent went to the CA via a Petition therein." (Words in brackets supplied.)
for Review with prayer for Preliminary Injunction 6 under
Rule 43 of the Rules of Court, whereat its appellate Petitioner promptly filed a motion for reconsideration.
recourse was docketed as CA-G.R. SP No. 57247. However, in its similarly challenged Resolution 8 of
November 12, 2004, the CA denied the motion, as it
Finding no confusing similarity between the marks further held:
"MACJOY" and "MCDONALD’S," the CA, in its herein
assailed Decision7 dated July 29, 2004, reversed and set Whether a mark or label of a competitor resembles
aside the appealed IPO decision and order, thus: another is to be determined by an inspection of the
points of difference and resemblance as a whole, and
WHEREFORE, in view of the foregoing, judgment is not merely the points of resemblance. The articles and
hereby rendered by us REVERSING and SETTING trademarks employed and used by the [respondent]
ASIDE the Decision of the IPO dated 28 December 1998 Macjoy Fastfood Corporation are so different and distinct
and its Order dated 14 January 2000 and ORDERING as to preclude any probability or likelihood of confusion
the IPO to give due course to petitioner’s Application or deception on the part of the public to the injury of the
Serial No. 75274. trade or business of the [petitioner] McDonald’s
Corporation. The "Macjoy & Device" mark is dissimilar in
color, design, spelling, size, concept and appearance to
SO ORDERED.
the McDonald’s marks. (Words in brackets supplied.)
Explains the CA in its decision:
Hence, the petitioner’s present recourse on the following
grounds:
xxx, it is clear that the IPO brushed aside and rendered
useless the glaring and drastic differences and variations
I.
in style of the two trademarks and even decreed that
these pronounced differences are "miniscule" and
considered them to have been "overshadowed by the THE COURT OF APPEALS ERRED IN RULING THAT
appearance of the predominant features" such as "M," RESPONDENT’S "MACJOY & DEVICE" MARK IS NOT
"Mc," and "Mac" appearing in both MCDONALD’S and CONFUSINGLY SIMILAR TO PETITIONER’S
MACJOY marks. Instead of taking into account these "McDONALD’S MARKS." IT FAILED TO CORRECTLY
differences, the IPO unreasonably shrugged off these APPLY THE DOMINANCY TEST WHICH HAS BEEN
CONSISTENTLY APPLIED BY THIS HONORABLE to execute and sign the mandatorily required certification
COURT IN DETERMINING THE EXISTENCE OF of non-forum shopping to support the instant petition for
CONFUSING SIMILARITY BETWEEN COMPETING review which stemmed from the "opposition
MARKS. proceedings" lodged by the petitioner before the IPO.
Considering that the person who executed and signed
A. The McDonald’s Marks belong to a well- the certification against forum shopping has the authority
known and established "family of marks" to do so, the petition, therefore, is not procedurally
distinguished by the use of the prefix "Mc" defective.
and/or "Mac" and the corporate "M" logo design.
As regards the respondent’s argument that the petition
B. The prefix "Mc" and/or "Mac" is the dominant raises only questions of fact which are not proper in a
portion of both Petitioner’s McDonald’s Marks petition for review, suffice it to say that the contradictory
and the Respondent’s "Macjoy & Device" mark. findings of the IPO and the CA constrain us to give due
As such, the marks are confusingly similar under course to the petition, this being one of the recognized
the Dominancy Test. exceptions to Section 1, Rule 45 of the Rules of Court.
True, this Court is not the proper venue to consider
factual issues as it is not a trier of facts. 12 Nevertheless,
C. Petitioner’s McDonald’s Marks are well-
when the factual findings of the appellate court are
known and world-famous marks which must be
mistaken, absurd, speculative, conjectural, conflicting,
protected under the Paris Convention.
tainted with grave abuse of discretion, or contrary to the
findings culled by the court of origin, 13 as here, this Court
II. will review them.

THE COURT OF APPEALS ERRED IN RULING THAT The old Trademark Law, Republic Act (R.A.) No. 166, as
THE DECISION OF THE IPO DATED 28 DECEMBER amended, defines a "trademark" as any distinctive word,
1998 AND ITS ORDER DATED 14 JANUARY 2000 name, symbol, emblem, sign, or device, or any
WERE NOT BASED ON SUBSTANTIAL EVIDENCE. combination thereof adopted and used by a
manufacturer or merchant on his goods to identify and
In its Comment,9 the respondent asserts that the petition distinguish them from those manufactured, sold, or dealt
should be dismissed outright for being procedurally in by others.14
defective: first, because the person who signed the
certification against forum shopping in behalf of the Under the same law, the registration of a trademark is
petitioner was not specifically authorized to do so, and subject to the provisions of Section 4 thereof, paragraph
second, because the petition does not present a (d) of which is pertinent to this case. The provision
reviewable issue as what it challenges are the factual reads:
findings of the CA. In any event, the respondent insists
that the CA committed no reversible error in finding no
Section 4. Registration of trademarks, trade-names and
confusing similarity between the trademarks in question.
service-marks on the principal register. – There is hereby
established a register of trademarks, tradenames and
The petition is impressed with merit. service-marks which shall be known as the principal
register. The owner of the trade-mark, trade-name or
Contrary to respondent’s claim, the petitioner’s service-mark used to distinguish his goods, business or
Managing Counsel, Sheila Lehr, was specifically services of others shall have the right to register the
authorized to sign on behalf of the petitioner the same on the principal register, unless it:
Verification and Certification10 attached to the petition. As
can be gleaned from the petitioner’s Board of Director’s xxx xxx xxx
Resolution dated December 5, 2002, as embodied in the
Certificate of the Assistant Secretary dated December
(d) Consists of or comprises a mark or trade-name which
21, 2004,11 Sheila Lehr was one of those authorized and
so resembles a mark or trade-name registered in the
empowered "to execute and deliver for and on behalf of
Philippines or a mark or trade-name previously used in
[the petitioner] all documents as may be required in
the Philippines by another and not abandoned, as to be
connection with x x x the protection and maintenance of
likely, when applied to or used in connection with the
any foreign patents, trademarks, trade-names, and
goods, business or services of the applicant, to cause
copyrights owned now or hereafter by [the petitioner],
confusion or mistake or to deceive purchasers;
including, but not limited to, x x x documents required to
institute opposition or cancellation proceedings against
conflicting trademarks, and to do such other acts and xxx xxx xxx
things and to execute such other documents as may be
necessary and appropriate to effect and carry out the Essentially, the issue here is whether there is a
intent of this resolution." Indeed, the afore-stated confusing similarity between the MCDONALD’S marks of
authority given to Lehr necessarily includes the authority the petitioner and the respondent’s "MACJOY &
DEVICE" trademark when applied to Classes 29 and 30 While we agree with the CA’s detailed enumeration of
of the International Classification of Goods, i.e., food and differences between the two (2) competing trademarks
ingredients of food. herein involved, we believe that the holistic test is not the
one applicable in this case, the dominancy test being the
In determining similarity and likelihood of confusion, one more suitable. In recent cases with a similar factual
jurisprudence has developed two tests, the dominancy milieu as here, the Court has consistently used and
test and the holistic test.15 The dominancy test focuses applied the dominancy test in determining confusing
on the similarity of the prevalent features of the similarity or likelihood of confusion between competing
competing trademarks that might cause confusion or trademarks.22
deception.16 In contrast, the holistic test requires the
court to consider the entirety of the marks as applied to Notably, in McDonalds Corp. v. LC Big Mak Burger,
the products, including the labels and packaging, in Inc.,23 a case where the trademark "Big Mak" was found
determining confusing similarity.17 Under the latter test, a to be confusingly similar with the "Big Mac" mark of the
comparison of the words is not the only determinant herein the petitioner, the Court explicitly held:
factor.18 1awphi1.net
This Court, xxx, has relied on the dominancy test rather
Here, the IPO used the dominancy test in concluding than the holistic test. The dominancy test considers the
that there was confusing similarity between the two (2) dominant features in the competing marks in determining
trademarks in question as it took note of the appearance whether they are confusingly similar. Under the
of the predominant features "M", "Mc" and/or "Mac" in dominancy test, courts give greater weight to the
both the marks. In reversing the conclusion reached by similarity of the appearance of the product arising from
the IPO, the CA, while seemingly applying the the adoption of the dominant features of the registered
dominancy test, in fact actually applied the holistic test. mark, disregarding minor differences. Courts will
The appellate court ruled in this wise: consider more the aural and visual impressions created
by the marks in the public mind, giving little weight to
Applying the Dominancy test to the present case, the factors like prices, quality, sales outlets and market
IPO should have taken into consideration the entirety of segments.
the two marks instead of simply fixing its gaze on the
single letter "M" or on the combinations "Mc" or "Mac". A Moreover, in Societe Des Produits Nestle, S.A. v.
mere cursory look of the subject marks will reveal that, CA24 the Court, applying the dominancy test, concluded
save for the letters "M" and "c", no other similarity exists that the use by the respondent therein of the word
in the subject marks. "MASTER" for its coffee product "FLAVOR MASTER"
was likely to cause confusion with therein petitioner’s
We agree with the [respondent] that it is entirely coffee products’ "MASTER ROAST" and "MASTER
unwarranted for the IPO to consider the prefix "Mac" as BLEND" and further ruled:
the predominant feature and the rest of the designs in
[respondent’s] mark as details. Taking into account such xxx, the totality or holistic test is contrary to the
paramount factors as color, designs, spelling, sound, elementary postulate of the law on trademarks and unfair
concept, sizes and audio and visual effects, the prefix competition that confusing similarity is to be determined
"Mc" will appear to be the only similarity in the two on the basis of visual, aural, connotative comparisons
completely different marks; and it is the prefix "Mc" that and overall impressions engendered by the marks in
would thus appear as the miniscule detail. When pitted controversy as they are encountered in the marketplace.
against each other, the two marks reflect a distinct and The totality or holistic test only relies on visual
disparate visual impression that negates any possible comparisons between two trademarks whereas the
confusing similarity in the mind of the buying public. dominancy test relies not only on the visual but also on
(Words in brackets supplied.) the aural and connotative comparisons and overall
impressions between the two trademarks.
Petitioner now vigorously points out that the dominancy
test should be the one applied in this case. Applying the dominancy test to the instant case, the
Court finds that herein petitioner’s "MCDONALD’S" and
We agree. respondent’s "MACJOY" marks are confusingly similar
with each other such that an ordinary purchaser can
conclude an association or relation between the marks.
In trademark cases, particularly in ascertaining whether
one trademark is confusingly similar to another, no set
rules can be deduced because each case must be To begin with, both marks use the corporate "M" design
decided on its merits.19 In such cases, even more than in logo and the prefixes "Mc" and/or "Mac" as dominant
any other litigation, precedent must be studied in the features. The first letter "M" in both marks puts emphasis
light of the facts of the particular case. 20 That is the on the prefixes "Mc" and/or "Mac" by the similar way in
reason why in trademark cases, jurisprudential which they are depicted i.e. in an arch-like, capitalized
precedents should be applied only to a case if they are and stylized manner.25
specifically in point.21
For sure, it is the prefix "Mc," an abbreviation of "Mac," A mark is valid if it is distinctive and hence not barred
which visually and aurally catches the attention of the from registration under the Trademark Law. However,
consuming public. Verily, the word "MACJOY" attracts once registered, not only the mark’s validity but also the
attention the same way as did "McDonalds," "MacFries," registrant’s ownership thereof is prima facie presumed. 26
"McSpaghetti," "McDo," "Big Mac" and the rest of the
MCDONALD’S marks which all use the prefixes Mc Pursuant to Section 3727 of R.A. No. 166, as amended,
and/or Mac. as well as the provision regarding the protection of
industrial property of foreign nationals in this country as
Besides and most importantly, both trademarks are used embodied in the Paris Convention 28 under which the
in the sale of fastfood products. Indisputably, the Philippines and the petitioner’s domicile, the United
respondent’s trademark application for the "MACJOY & States, are adherent-members, the petitioner was able to
DEVICE" trademark covers goods under Classes 29 and register its MCDONALD’S marks successively, i.e.,
30 of the International Classification of Goods, namely, "McDonald’s" in 04 October, 197129 ; the corporate logo
fried chicken, chicken barbeque, burgers, fries, which is the "M" or the golden arches design and the
spaghetti, etc. Likewise, the petitioner’s trademark "McDonald’s" with the "M" or golden arches design both
registration for the MCDONALD’S marks in the in 30 June 197730 ; and so on and so forth.31
Philippines covers goods which are similar if not identical
to those covered by the respondent’s application. On the other hand, it is not disputed that the
respondent’s application for registration of its trademark
Thus, we concur with the IPO’s findings that: "MACJOY & DEVICE" was filed only on March 14, 1991
albeit the date of first use in the Philippines was
In the case at bar, the predominant features such as the December 7, 1987.32
"M," "Mc," and "Mac" appearing in both McDonald’s
marks and the MACJOY & DEVICE" easily attract the Hence, from the evidence on record, it is clear that the
attention of would-be customers. Even non-regular petitioner has duly established its ownership of the
customers of their fastfood restaurants would readily mark/s.
notice the predominance of the "M" design, "Mc/Mac"
prefixes shown in both marks. Such that the common Respondent’s contention that it was the first user of the
awareness or perception of customers that the mark in the Philippines having used "MACJOY &
trademarks McDonalds mark and MACJOY & DEVICE DEVICE" on its restaurant business and food products
are one and the same, or an affiliate, or under the since December, 1987 at Cebu City while the first
sponsorship of the other is not far-fetched. McDonald’s outlet of the petitioner thereat was opened
only in 1992, is downright unmeritorious. For the
The differences and variations in styles as the device requirement of "actual use in commerce x x x in the
depicting a head of chicken with cap and bowtie and Philippines" before one may register a trademark, trade-
wings sprouting on both sides of the chicken head, the name and service mark under the Trademark
heart-shaped "M," and the stylistic letters in "MACJOY & Law33 pertains to the territorial jurisdiction of the
DEVICE;" in contrast to the arch-like "M" and the one- Philippines and is not only confined to a certain region,
styled gothic letters in McDonald’s marks are of no province, city or barangay.
moment. These minuscule variations are overshadowed
by the appearance of the predominant features Likewise wanting in merit is the respondent’s claim that
mentioned hereinabove. the petitioner cannot acquire ownership of the word
"Mac" because it is a personal name which may not be
Thus, with the predominance of the letter "M," and monopolized as a trademark as against others of the
prefixes "Mac/Mc" found in both marks, the inevitable same name or surname. As stated earlier, once a
conclusion is there is confusing similarity between the trademark has been registered, the validity of the mark is
trademarks Mc Donald’s marks and "MACJOY AND prima facie presumed. In this case, the respondent failed
DEVICE" especially considering the fact that both marks to overcome such presumption. We agree with the
are being used on almost the same products falling observations of the petitioner regarding the respondent’s
under Classes 29 and 30 of the International explanation that the word "MACJOY" is based on the
Classification of Goods i.e. Food and ingredients of food. name of its president’s niece, Scarlett Yu Carcell. In the
words of the petitioner:
With the existence of confusing similarity between the
subject trademarks, the resulting issue to be resolved is First of all, Respondent failed to present evidence to
who, as between the parties, has the rightful claim of support the foregoing claim which, at best, is a mere
ownership over the said marks. self-serving assertion. Secondly, it cannot be denied that
there is absolutely no connection between the name
We rule for the petitioner. "Scarlett Yu Carcel" and "MacJoy" to merit the coinage
of the latter word. Even assuming that the word
"MacJoy" was chosen as a term of endearment,
fondness and affection for a certain Scarlett Yu Carcel,
allegedly the niece of Respondent’s president, as well as G.R. Nos. 211834-35, June 06, 2018
to supposedly bring good luck to Respondent’s business,
one cannot help but wonder why out of all the possible UNI-LINE MULTI-RESOURCES,
letters or combinations of letters available to INC., Petitioner, v. KENSONIC, INC., Respondent.
Respondent, its president had to choose and adopt a
mark with the prefix "Mac" as the dominant feature DECISION
thereof. A more plausible explanation perhaps is that the
niece of Respondent’s president was fond of the food BERSAMIN, J.:
products and services of the Respondent, but that is
beside the point." 34
The case concerns the cancellation of the registration of
the trademark SAKURA for the goods of Uni-Line Multi
By reason of the respondent’s implausible and Resources, Inc. (Phils.) (Uni-Line) being sought by
insufficient explanation as to how and why out of the Kensonic, Inc. (Kensonic) on the ground that the latter
many choices of words it could have used for its trade- had prior use and registration of the SAKURA mark.
name and/or trademark, it chose the word "MACJOY,"
the only logical conclusion deducible therefrom is that
The Case
the respondent would want to ride high on the
established reputation and goodwill of the MCDONALD’s
Under consideration are the consolidated appeals urging
marks, which, as applied to petitioner’s restaurant
the review and reversal of the decision promulgated on
business and food products, is undoubtedly beyond
July 30, 20131 and the amended decision promulgated
question.
on March 19, 2014,2 whereby the Court of Appeals (CA)
affirmed the decision rendered on June 11, 2012 by the
Thus, the IPO was correct in rejecting and denying the Director General of the Intellectual Property Office (IPO)
respondent’s application for registration of the trademark upholding the cancellation of the application of Uni-Line
"MACJOY & DEVICE." As this Court ruled in Faberge for the registration of the SAKURA mark for goods falling
Inc. v. IAC,35 citing Chuanchow Soy & Canning Co. v. under Class 09 of the Nice International Classification of
Dir. of Patents and Villapanta:36 Goods (Nice Classification), and allowing the registration
of Uni-Line's SAKURA mark registration for goods falling
When one applies for the registration of a trademark or under Class 07 and Class 11 of the Nice Classification.3
label which is almost the same or very closely resembles
one already used and registered by another, the Antecedents
application should be rejected and dismissed outright,
even without any opposition on the part of the owner and The CA summarized the following factual and procedural
user of a previously registered label or trademark, this antecedents, viz.:
not only to avoid confusion on the part of the public, but On June 15, 1999, Uni-Line filed an application for the
also to protect an already used and registered trademark registration of the mark "SAKURA" for amplifier, speaker,
and an established goodwill. cassette, cassette disk, video cassette disk, car stereo,
television, digital video disk, mini component, tape deck,
WHEREFORE, the instant petition is GRANTED. compact disk charger, VHS, and tape rewinder falling
Accordingly, the assailed Decision and Resolution of the under Class 9 of the Nice International Classification of
Court of Appeals in CA-G.R. SP NO. 57247, are Goods. Kensonic opposed Uni-Line's application which
REVERSED and SET ASIDE and the Decision of the was docketed as IPC No. 14-2004-00160 (IPC 1). The
Intellectual Property Office in Inter Partes Case No. 3861 Director of the Bureau of Legal Affairs (BLA) rendered
is REINSTATED. Decision No. 2005-01 dated November 29, 2005 finding
that Kensonic was the first to adopt and use the mark
No pronouncement as to costs. SAKURA since 1994 and thus rejecting Uni-Line's
application. On January 19, 2006, said Decision became
final and executory.
SO ORDERED.
While IPC Case 1 was pending, Uni-Line filed an
application and was issued a certificate of registration for
the mark "SAKURA & FLOWER DESIGN" for use on
recordable compact disk (CD-R) computer, computer
parts and accessories falling under Class 9. On
September 7, 2006, Kensonic filed a petition for
cancellation docketed as IPC No. 14-2006-00183 (IPC 2)
of Uni-Line's registration. In Decision No. 08-113 dated
G.R. Nos. 211820-21, June 06, 2018
August 7, 2008, the BLA Director held that Uni-Line's
goods are related to Kensonic's goods and that the latter
KENSONIC, INC., Petitioner, v. UNI-LINE MULTI- was the first user of the mark SAKURA used on products
RESOURCES, INC., (PHIL.), Respondent. under Class 9. The BLA Director thus cancelled Uni-
Line's certificate of registration. Uni-Line moved for revealed that the marks were confusingly similar with
reconsideration of the BLA Director's Decision which is each other; that the goods sought to be covered by the
pending resolution to date. SAKURA registration of Uni-Line were related to the
goods of Kensonic, thereby necessitating the
On June 6, 2002, Uni-Line filed an application for the cancellation of the registration of Uni-Line's mark; and
registration of the trademark SAKURA for use on the that considering that Kensonic had used the SAKURA
following: mark as early as 1994 in Class 09 goods (namely:
amplifiers, speakers, cassette disks, video cassette
Goods Nice Classification disks, car stereos, televisions, digital video disks, mini
Washing machines, high Class 07 components, tape decks, compact disk chargers, VHS
pressure washers, and tape rewinders), Kensonic had acquired ownership
vacuum cleaners, floor of the SAKURA mark, and should be legally protected
polishers, blender, electric thereon. The dispositive portion reads:
mixer, electrical juicer WHEREFORE, premises considered, the Verified
Petition for Cancellation is hereby GRANTED.
Television sets, stereo Class 09 Accordingly, Certificate of Registration No. 4-2002-
components, DVD/VCD 004572 issued on 18 March 2006 for the trademark
players, voltage "SAKURA" in the name of Uni-Line Multi Resources, Inc.
regulators, portable Phils., is hereby ordered CANCELLED.
generators, switch
breakers, fuse Let the file wrapper of this case be forwarded to the
Bureau of Trademark (BOT) for appropriate action in
Refrigerators, air Class 11 accordance with this Decision.
conditioners, oven toaster,
turbo broiler, rice cooker, SO ORDERED.6
microwave oven, coffee
maker, sandwich/waffle Decision of the Director General, IPO
maker, electric stove,
electric fan, hot & cold On appeal,7 the Director General of the IPO modified the
water dispenser, airpot, decision of the BLR by upholding Uni-Line's registration
electric griller and electric of the SAKURA mark as to goods classified as Class 07
hot pot and Class 11, thereby effectively reversing the BLR, but
affirmed the BLR as regards the treatment of the
Uni-Line's application was thereafter published, and SAKURA mark that covered the goods falling under
there being no opposition thereto, Certificate of Class 09. The Director General clarified that the marks of
Registration No. 4-2002-004572 for the mark SAKURA Uni-Line and Kensonic were similar if not identical; that
effective March 18, 2006 was issued. considering that Inter Partes Case No. 14-2004-00160
(IPC 1) already effectively ruled that the products
On September 7, 2006, Kensonic filed with the BLA a registered by Uni-Line were goods related to those
Petition for Cancellation of Uni-Line's Certificate of covered by the registration of Kensonic, the registration
Registration alleging that in October 1994, it introduced of Uni-Line insofar as those products sought to be
the marketing of SAKURA products in the Philippines registered under Class 09 were concerned (i.e.,
and that it owned said SAKURA products and was the television sets, stereo components, DVD/VCD players,
first to use, introduce and distribute said products. voltage regulators, portable generators, switch breakers,
Kensonic also alleged that in IPC 1, it opposed Uni- fuse) was correctly cancelled; that the registration of
Line's application to register SAKURA and was already products of Uni-Line falling under Class 07 and Class 11
sustained by the Director General, which Decision is now should not be cancelled because the products were
final and executory. Kensonic further alleged that it is the different from the goods registered under Class 09 in the
owner of a copyright for SAKURA and that since 1994, name of Kensonic; that there should be evidence
has maintained and established a good name and showing how the continued registration of the SAKURA
goodwill over the SAKURA products. mark of Uni-Line would cause damage to Kensonic; and
that the goods covered by the SAKURA registration of
Kensonic filed its Supplemental Petition for Cancellation Uni-Line and the SAKURA registration of Kensonic
and its Reply to Uni-Line's Answer. Uni-Line filed its should be distinguished because:
Rejoinder thereto.4 In addition, the ordinary purchaser must be thought of,
Decision of the Bureau of Legal Affairs (BLA), IPO as having, and credited with, at least a modicum of
intelligence. It does not defy common sense to assert
After due proceedings, the BLA issued Decision No. that a purchaser would be cognizant of the product he is
2008-149 dated August 11, 2008,5 whereby it ruled in buying. As a general rule, an ordinary buyer does not
favor of Kensonic and against Uni-Line, and directed the exercise as much pendence in buying an article for
cancellation of Registration No. 4-2002-004572 of the which he pays a few centavos as he does in purchasing
latter's SAKURA mark. It observed that an examination a more valuable thing. Expensive and valuable items are
of the SAKURA mark of Kensonic and that of Uni-Line normally bought only after deliberate, comparative and
analytical investigation. because the products were different and unrelated. It
ruled:
In this instance, the products of the Appellants under WHEREFORE, the Petition filed by Kensonic, Inc., in
Classes 7 and 11 are home appliances which are not the C.A.G.R. SP No. 125420 is DENIED and the Petition
ordinary everyday goods the public buys and consumes. filed by Uni-Line Multi Resources, Inc. (Phils.)
These products are not inexpensive items and a is GRANTED.
purchaser would ordinarily examine carefully the
features and characteristics of the same. It is, therefore, Accordingly, the Decision dated June 11, 2012 of
farfetched that the purchasing public would be misled or Director General Ricardo R. Blancaflor of the Intellectual
be deceived as to the source or origin of the products. Property Office is MODIFIED such that Uni-Line's
Furthermore, there is nothing in the records that indicate Appeal insofar as the cancellation of its Certificate of
any plans by the Appellee to enter into business Registration No. 4-2002-004572 for goods enumerated
transactions or to the manufacture and distribution of and falling under Class 9
goods similar to the products of the Appellants under is GRANTED but DELETING therefrom the goods
Classes 7 and 11.8 television sets, stereo components, DVD players and
VCD players. The Decision dated June 11, 2012 of the
The Director General of the IPO decreed as follows:
Director General is hereby UPHELD insofar as it granted
Wherefore, premises considered, the appeal is hereby
Uni-Line's Appeal on the cancellation of its Certificate of
dismissed in so far as the cancellation of the Appellant's
Registration No. 4-2002-004572 for goods enumerated
Cert. of Reg. No. 4-2002- 004572 for goods enumerated
and falling under Class 7 and Class 11.
and falling under Class 9 is concerned. However, the
appeal is hereby granted in so far as the cancellation of
SO ORDERED.10
Cert. of Reg. No. 4-2002-004572 for goods enumerated
and falling under Classes 7 and 11 is concerned. Kensonic sought partial reconsideration, submitting that
voltage regulators, portable generators, switch breakers
Accordingly, Cert. of Reg. No. 4-2002-004572 issued in and fuse were closely related to its products; that
favor of the Appellant for the mark SAKURA is hereby maintaining the two SAKURA marks would cause
amended. The registration of goods enumerated under confusion as to the source of the goods; and that Uni-
Class 9, namely television sets, stereo components, Line's goods falling under Class 07 and Class 11 were
DVD/VCD players, voltage regulators, portable closely related to its goods falling under Class 09.
generators, switch breakers, fuse is hereby cancelled.
In the assailed amended decision promulgated on March
Let a copy of this Decision as well as the records of this 19, 2014,11 the CA sided with Kensonic, and reverted to
case be furnished and returned to the Director of the the ruling by the Director General of IPO cancelling the
Bureau of Legal Affairs for appropriate action. Further, registration of the SAKURA mark covering all the goods
let also the Director of the Bureau of Trademarks and the of Uni-Line falling under Class 09 on the basis that all
library of Documentation, Information and Technology the goods belonged to the general class of goods. The
Transfer Bureau be furnished a copy of this Decision for CA decreed:
information, guidance, and records purposes. WHEREFORE, the Motion for Partial Reconsideration
filed by Kensonic Inc. is PARTIALLY GRANTED. Uni-
SO ORDERED.9 Line is prohibited from using the mark SAKURA for
goods falling under Class 9, but is allowed to use the
Judgment of the CA
mark SAKURA for goods falling under Classes 7 and 11.
Thus, the DENlAL of Uni-Line's Appeal insofar as the
Both parties appealed to the CA, which promulgated its
cancellation of its Certificate of Registration No. 4-2002-
decision on July 30, 2013 dismissing the appeal of
004572 for goods enumerated and falling under Class 9
Kensonic (C.A.-G.R. SP No. 125420) and granting Uni-
is UPHELD. The Decision dated June 11, 2012 of the
Line's appeals (C.A.-G.R. SP No. 125424). The CA
Director General is AFFIRMED in toto.
upheld Kensonic's ownership of the SAKURA mark
based on its showing of its use of the mark since 1994,
SO ORDERED.12
but ruled that despite the identical marks of Kensonic
and Uni-Line, Kensonic's goods under Class 09 were Issues
different from or unrelated to Uni-Line's goods under
Class 07 and Class 11. It observed that the protection of Hence, this appeal by both parties.
the law regarding the SAKURA mark could only extend
to television sets, stereo components, DVD and VCD Kensonic (G.R. Nos. 211820-21) insists that the CA
players but not to Uni-Line's voltage regulators, portable erred in not considering that Uni-Line's goods under
generators, switch breakers and fuses due to such Class 07 and Class 11 were related to its goods falling
goods being unrelated to Kensonic's goods; that under Class 09; and that all the agencies below were
Kensonic's registration only covered electronic audio- unanimous in declaring that the marks were identical,
video products, not electrical home appliances; and that and, as such, the use of the SAKURA marks would lead
the similarity of the marks would not confuse the public to confusion about the source of the goods.
Uni-Line (G.R. Nos. 211834-35) contends that the mark but having such generic mark being identifiable to
SAKURA mark could not be appropriated because it the good or service. In Asia Brewery, Inc., v. Court of
simply referred to cherry blossom in Japanese and was Appeals,15 the Court ruled that there was no infringement
thus a generic name that was not copyrightable; that it of San Miguel Brewery's Pale Pilsen trademark because
was grave error for the IPO and the CA to rule that Pale Pilsen could not be appropriated. The Court
Kensonic owned the mark; and that voltage regulators, explained:
portable generators, switch breakers and fuse were The fact that the words pale pilsen are part of ABI's
unrelated to Kensonic's products because Uni-Line's trademark does not constitute an infringement of SMC's
products were not electronic. trademark: SAN MIGUEL PALE PILSEN, for "pale
pilsen" are generic words descriptive of the color
The following issues are, therefore, to be resolved: ("pale"), of a type of beer ("pilsen"), which is a light
(1) Is the SAKURA mark capable of appropriation? bohemian beer with a strong hops flavor that originated
in the City of Pilsen in Czechoslovakia and became
(2) Are Kensonic's goods falling under Class 09 famous in the Middle Ages. (Webster's Third New
related to UniLine's goods falling under Class 07 International Dictionary of the English Language,
and Class 11?; and Unabridged Edited by Philip Babcock Gove. Springfield,
Mass.: G & C Merriam Co., c) 1976, page 1716.) "Pilsen"
(3) Are Uni-Line's goods falling under Class 9, is a "primarily geographically descriptive word," (Sec. 4,
namely: voltage regulators, portable generators, subpar. [e] Republic Act No. 166, as inserted by Sec. 2
switch breakers and fuses, related to Kensonic's of R.A. No. 638) hence, non-registerable and not
goods falling under Class 9? appropriable by any beer manufacturer. The Trademark
Ruling of the Court Law provides:
"Sec. 4.... The owner of trade-mark, trade-name or
The appeal of Kensonic in G.R. Nos. 211820-21 is service-mark used to distinguish his goods, business or
dismissed but the petition in G.R. Nos. 211834-35 is services from the goods, business or services of others
partially granted. shall have the right to register the same [on the principal
register], unless it:
I.
xxx   xxx  xxx
The SAKURA mark can be appropriated
"(e) Consists of a mark or trade-name which, when
Uni-Line's opposition to Kensonic's ownership of the applied to or used in connection with the goods,
SAKURA mark insists that the: SAKURA mark is not business or services of the applicant is merely
copyrightable for being generic. Such insistence is descriptive or deceptively misdescriptive of them, or
unacceptable. when applied to or used in connection with the goods,
business or services of the applicant is primarily
To be noted is that the controversy revolves around the geographically descriptive or deceptively misdescriptive
SAKURA mark which is not a copyright. The distinction of them, or is primarily merely a surname." (Emphasis
is significant. A mark is any visible sign capable of supplied.)"
distinguishing the goods (trademark) or services (service The words "pale pilsen" may not be appropriated by
mark) of an enterprise, and includes a stamped or SMC for its exclusive use even if they are part of its
marked container of goods.13 In contrast, a copyright is registered trademark: SAN MIGUEL PALE PILSEN, any
the right to literary property as recognized and more than such descriptive words as "evaporated milk,"
sanctioned by positive law; it is an intangible, incorporeal "tomato ketchup," "cheddar cheese," "com flakes" and
right granted by statute to the author or originator of "cooking oil" may be appropriated by any single
certain literary or artistic productions, whereby he or she manufacturer of these food products, for no other reason
is invested, for a specific period, with the sole and than that he was the first to use them in his registered
exclusive privilege of multiplying copies of the same and trademark. In Masso Hermanos, S.A. vs. Director of
publishing and selling them.14 Obviously, the SAKURA Patents, 94 Phil. 136, 139 (1953), it was held that a
mark is not an artistic or literary work but a sign used to dealer in shoes cannot register "Leather Shoes" as his
distinguish the goods or services of one enterprise from trademark because that would be merely descriptive and
those of another. it would be unjust to deprive other dealers in leather
shoes of the right to use the same words with reference
An examination of the pertinent laws also reveals that to their merchandise. No one may appropriate generic or
Uni-Line mistakenly argues that the SAKURA mark was descriptive words. They belong to the public domain
not capable of registration for being generic. (Ong Ai Gui vs. Director of Patents, 96 Phil. 673, 676 
[1955]).
Section 123(h) of the Intellectual Property Code prohibits "A word or a combination of words which is merely
the registration of a trademark that consists exclusively descriptive of an article of trade, or of its composition,
of signs that are generic for the goods or services that characteristics, or qualities, cannot be appropriated and
they seek to identify. It is clear from the law itself, protected as a trademark to the exclusion of its use by
therefore, that what is prohibited is not having a generic others . . . inasmuch as all persons have an equal right
to produce and vend similar articles, they also have the law which must be distinctly set forth. The petitioner may
right to describe them properly and to use any seek the same provisional remedies by verified motion
appropriate language or words for that purpose, and no filed in the same action or proceeding lat any time during
person can appropriate to himself exclusively any word its pendency.
or expression, properly descriptive of the article, its The distinction between a question of law and a question
qualities, ingredients or characteristics, and thus limit of fact is well defined. According to Tongonan Holdings
other persons in the use of language appropriate to the and Development Corporation v. Escaño, Jr.:17
description of their manufactures, the right to the use of A question of law arises when there is doubt as to what
such language being common to all. This rule excluding the law is on a certain state of facts, while there is a
descriptive terms has also been held to apply to trade- question of fact when the doubt arises as to the truth or
names. As to whether words employed fall within this falsity of the alleged facts. For a question to be one of
prohibition, it is said that the true test is not whether they law, the same must not involve an examination of the
are exhaustively descriptive of the article designated, but probative value of the evidence presented by the litigants
whether in themselves, and as they are commonly used or any of them. The resolution of the issue must rest
by those who understand their meaning, they are solely on what the law provides on the given set of
reasonably indicative and descriptive of the thing circumstances. Once it is clear that the issue invites a
intended. If they are thus descriptive, and not arbitrary, review of the evidence presented, the question posed is
they cannot be appropriated from general use and one of fact. Thus, the test of whether a question is one of
become the exclusive property of anyone. (52 Am. Jur. law or of fact is not the appellation given to such
542-543.) question by the party raising the same; rather, it is
  whether the appellate court can determine the issue
". . . Others may use the same or similar descriptive raised without reviewing or evaluating the evidence, in
word in connection with their own wares, provided they which case, it is a question of law; otherwise it is a
take proper steps to prevent the public being deceived. question of fact.
(Richmond Remedies Co. vs. Dr. Miles Medical Co., 16
E. [2d] 598.) It is timely to remind, too, that the Court is not a trier of
facts. Hence, the factual findings of the quasi-judicial
". . . A descriptive word may be admittedly distinctive, body like the IPO, especially when affirmed by the CA,
especially if the user is the first creator of the article. It are binding on the Court.18 Jurisprudence has laid down
will, however, be denied protection, not because it lacks certain exceptions to the rule of bindingness, 19 but, alas,
distinctiveness, but rather because others are equally Uni-Line did not discharge its burden to show how its
entitled to its use. (2 Callman, Unfair Competition and urging for a review of the factual findings came within
Trademarks, pp. 869-870.)" any of the exceptions.
This, however, is not the situation herein. Although
II.
SAKURA refers to the Japanese flowering cherry 16 and
is, therefore, of a generic nature, such mark did not
Uni-Line's goods classified under Class 07 and
identify Kensonic's goods unlike the mark in Asia
Class 11 were not related to Kensonic's goods
Brewery, Inc., v. Court of Appeals. Kensonic's DVD or
registered under Class 09
VCD players and other products could not be identified
with cherry blossoms. Hence, the mark can be
The CA did not err in allowing the registration of Uni-
appropriated.
Line's products falling under Class 07 and Class 11, for,
indeed, those products - as found by the lower tribunals
Kensonic's prior use of the mark since 1994 made it the
were unrelated to the goods of Kensonic registered
owner of the mark, and its ownership cannot anymore be
under Class 09.
challenged at this stage of the proceedings. Seeking the
review of Kensonic's ownership would entail the
Still, Kensonic contends that the goods of Uni-Line
examination of facts already settled by the lower
classified under Class 07 and Class 11 were covered by
tribunals. Uni-Line's challenge to the ownership of the
the prohibition from registration for being within the
SAKURA mark should stop here because the Court
normal potential expansion of Kensonic.
cannot act on a factual matter in this appeal by petition
for review on certiorari, which is limited to the
The contention is unwarranted.
consideration of questions of law. Section 1, Rule 45 of
the Rules of Court specifically so provides:
The prohibition under Section 123 of the Intellectual
Section 1. Filing of petition with Supreme Court. - A party
Property Code extends to goods that are related to the
desiring to appeal by certiorari from a judgment or final
registered goods, not to goods that the registrant may
order or resolution of the Court of Appeals,
produce in the future. To allow the expansion of
the Sandiganbayan, the Court of Tax Appeals, the
coverage is to prevent future registrants of goods from
Regional Trial Court or other courts whenever authorized
securing a trademark on the basis of mere possibilities
by law, may file with the Supreme Court a verified
and conjectures that may or may not occur at all. Surely,
petition for review on certiorari. The petition may include
the right to a trademark should not be made to depend
an application for a writ of preliminary injunction or other
on mere possibilities and conjectures.
provisional remedies and shall raise only questions of
 establish relatedness petween the goods, for this only
In Mighty Corporation v. E. & J. Gallo Winery,20 the Court accounts for one of many considerations enumerated
has identified the different factors by which to determine in Mighty Corporation. xxx
whether or not goods are related to each other for
purposes of registration: Clearly then, it was erroneous for respondent to assume
Non-competing goods may be those which, though they over the CA to condude that all electronic products are
are not in actual competition, are so related to each related and that the coverage of one electronic product
other that it can reasonably be assumed that they necessarily precludes the registration of a similar; mark
originate from one manufacturer, in which case, over another. In this digital age wherein electronic
confusion of business can arise out of the use of similar products have not only diversified by leaps and bounds,
marks. They may also be those which, being entirely and are geared towards interoperability, it is difficult to
unrelated, cannot be assumed to have a common assert readily, as respondent simplistically did, that all
source; hence, there is no confusion of business, even devices that require plugging into sockets are
though similar marks are used. Thus, there is no necessarily related goods.
trademark infringement if the public does not expect the
plaintiff to make or sell the same class of goods as those It bears to stress at this point that the list of products
made or sold by the defendant. included in Class 9 can be sub-categorized into five (5)
classifications, namely: (1) apparatus and instruments
In resolving whether goods are related, several factors for scientific or research purposes, (2) information
come into play: technology and audiovisual equipment, (3) apparatus
and devices for controlling the distribution and use of
(a) the business (and its location) to which the goods electricity, (4) optical apparatus and instruments, and (5)
belong safety equipment. From this subclassification, it
becomes apparent that petitioner's products, i.e.,
(b) the class of product to which the goods belong televisions and DVD players, belong to audiovisual
equipment, while that of respondent, consisting of
(c) the product's quality, quantity, or size, including automatic voltage regulator, converter, recharger, stereo
the nature of the package, wrapper or container booster, AC-DC regulated power supply, step-down
(d) the nature and cost of the articles transformer, and PA amplified AC-DC, generally fall
under devices for controlling the distribution and use of
(e) the descriptive properties, physical attributes or electricity.
essential characteristics with reference to their
Based on the foregoing pronouncement in Taiwan Kolin
form, composition, texture or quality
Corporation, Ltd. v. Kolin Electronics, Co., Inc., there are
(f) the purpose of the goods other sub-classifications present even if the goods are
classified under Class 09. For one, Kensonic's goods
(g) whether the article is bought for immediate belonged to the information technology and audiovisual
consumption, that is, day-to-day household items equipment subclass, but Uni-Line's goods pertained to
the apparatus and devices for controlling the distribution
(h) the fields of manufacture
of electricity sub-class. Also, the Class 09 goods of
(i) the conditions under which the article is usually Kensonic were final products but Uni-Line's Class 09
purchased and products were spare parts. In view of these distinctions,
the Court agrees with Uni-Line that its Class 09 goods
(j) the channels of trade through which the goods were unrelated to the Class 09 goods of Kensonic.
flow, how they are distributed, marketed,
displayed and sold. (Citations omitted) WHEREFORE, the Court DENIES the petition for review
An examination of the foregoing factors reveals that the on certiorari in G.R. No. 211820-21; PARTIALLY
goods of Uni-Line were not related to the goods of GRANTS the petition for review on certiorari in G.R. No.
Kensonic by virtue of their differences in class, the 211834-35; REVERSES and SETS ASIDE the amended
descriptive attribues, the purposes and the conditions of decision promulgated on March 19, 2014; PARTIALLY
the goods. REINSTATES the decision promulgated on July 30,
2013 insofar as it allowed the registration by Uni-Line
In Taiwan Kolin Corporation, Ltd. v. Kolin Electronics, Multi-Resources, Inc. under the SAKURA mark of its
Co., Inc.,21 the Court has opined tht the mere fact that voltage regulators, portable generators, switch breakers
goods belonged to the same class does not necessarily and fuses; and ORDERS Kensonic, Inc. to pay the costs
mean that they are related; and that the factors listed of suit.
in Mighty Corporation v. E. & J. Gallo Winery should be
taken into consideration, to wit: SO ORDERED.
As mentioned, the classification of the products under
the NCL is merely part and parcel of the factors to be
considered in ascertaining whether the goods are
related. It is not sufficient to state that the goods involved
herein are electronic products under Class 9 in order to
 TEEHANKEE, J.:1äwphï1.ñët

The Court affirms on the basis of controlling doctrine the

appealed decision of the Court of Appeals reversing that
of the Court of First Instance of Manila and dismissing
the complaint filed by herein petitioner against private
respondent for trade infringement for using petitioner's
trademark ESSO, since it clearly appears that the goods
on which the trademark ESSO is used by respondent is
non-competing and entirely unrelated to the products of
petitioner so that there is no likelihood of confusion or
deception on the part of the purchasing public as to the
origin or source of the goods.

Petitioner Esso Standard Eastern, Inc., 1 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 (which as
successor of the defunct Standard Vacuum Oil Co. it
registered as a business name with the Bureaus of
Commerce and Internal Revenue in April and May,
1962). Private respondent in turn 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.

Barely had respondent as such successor started

manufacturing cigarettes with the trademark ESSO,
when petitioner commenced a case for trademark
infringement in the Court of First Instance of Manila. The
complaint alleged that the petitioner 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. Petitioner asserted that the
continued use by private respondent 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.

In its answer, respondent admitted that it used the

trademark ESSO on its own product of cigarettes, which
was not Identical to those produced and sold by
petitioner and therefore did not in any way infringe on or
imitate petitioner's trademark. Respondent contended
that in order that there may be trademark infringement, it
G.R. No. L-29971 August 31, 1982 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.
ESSO STANDARD EASTERN, INC., petitioner,
vs.
THE HONORABLE COURT OF APPEALS ** and The trial court, relying on the old cases of Ang vs.
UNITED CIGARETTE CORPORATION, respondents. Teodoro 2 and Arce & Sons, Inc. vs. Selecta Biscuit
Company, 3 referring to related products, decided in
favor of petitioner and ruled that respondent was guilty of
& infringement of trademark.
On appeal, respondent Court of Appeals found that there stores. 11 Thus, biscuits were held related to milk
was no trademark infringement and dismissed the because they are both food products. 12 Soap and
complaint. Reconsideration of the decision having been perfume, lipstick and nail polish are similarly related
denied, petitioner appealed to this Court by way of because they are common household items now a
certiorari to reverse the decision of the Court of Appeals days. 13 The trademark "Ang Tibay" for shoes and
and to reinstate the decision of the Court of First slippers was disallowed to be used for shirts and pants
Instance of Manila. The Court finds no ground for because they belong to the same general class of
granting the petition. goods. 14 Soap and pomade although non- competitive,
were held to be similar or to belong to the same class,
The law defines infringement as the use without consent since both are toilet articles. 15 But no confusion or
of the trademark owner of any "reproduction, counterfeit, deception can possibly result or arise when the name
copy or colorable limitation of any registered mark or "Wellington" which is the trademark for shirts, pants,
tradename in connection with the sale, offering for sale, drawers and other articles of wear for men, women and
or advertising of any goods, business or services on or in children is used as a name of a department store. 16
connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others Thus, in Acoje Mining Co., Inc. vs. Director of
as to the source or origin of such goods or services, or Patents, 17 the Court, through now Chief Justice
Identity of such business; or reproduce, counterfeit, copy Fernando, reversed the patent director's decision on the
or colorably imitate any such mark or tradename and question of "May petitioner Acoje Mining Company
apply such reproduction, counterfeit, copy or colorable register for the purpose of advertising its product, soy
limitation to labels, signs, prints, packages, wrappers, sauce, the trademark LOTUS, there being already in
receptacles or advertisements intended to be used upon existence one such registered in favor of the Philippine
or in connection with such goods, business or Refining Company for its product, edible oil, it being
services." 4 Implicit in this definition is the concept that further shown that the trademark applied for is in smaller
the goods must be so related that there is a likelihood type, colored differently, set on a background which is
either of confusion of goods or business. 5 But likelihood dissimilar as to yield a distinct appearance?" and
of confusion is a relative concept; to be determined only ordered the granting of petitioner's application for
according to the particular, and sometimes peculiar, registration ruling that "there is quite a difference
circumstances of each case. 6 It is unquestionably true between soy sauce and edible oil. If one is in the market
that, as stated in Coburn vs. Puritan Mills, Inc. 7 "In for the former, he is not likely to purchase the latter just
trademark cases, even more than in other litigation, because of the trademark LOTUS" and "when regard is
precedent must be studied in the light of the facts of the had for the principle that the two trademarks in their
particular case. entirety as they appear in their respective labels should
be considered in relation to the goods advertised before
It is undisputed that the goods on which petitioner uses registration could be denied, the conclusion is
the trademark ESSO, petroleum products, and the inescapable that respondent Director ought to have
product of respondent, cigarettes, are non-competing. reached a different conclusion. "
But as to whether trademark infringement exists
depends for the most part upon whether or not the goods By the same token, in the recent case of Philippine
are so related that the public may be, or is actually, Refining Co., Inc. vs. Ng Sam and Director of
deceived and misled that they came from the same Patents, 18 the Court upheld the patent director's
maker or manufacturer. For non-competing goods may registration of the same trademark CAMIA for therein
be those which, though they are not in actual respondent's product of ham notwithstanding its already
competition, are so related to each other that it might being used by therein petitioner for a wide range of
reasonably be assumed that they originate from one products: lard butter, cooking oil, abrasive detergents,
manufacturer. Non-competing goods may also be those polishing materials and soap of all kinds. The Court, after
which, being entirely unrelated, could  not reasonably be noting that the same CAMIA trademark had been
assumed to have a common source. in the former case registered by two other companies, Everbright
of related goods, confusion of business could arise out of Development Company and F. E. Zuellig, Inc. for their
the use of similar marks; in the latter case of non-related respective products of thread and yarn (for the former)
goods, it could not. 8 The vast majority of courts today and textiles, embroideries and laces (for the latter) ruled
follow the modern theory or concept of "related that "while ham and some of the products of petitioner
goods" 9 which the Court has likewise adopted and are classified under Class 47 (Foods and Ingredients of
uniformly recognized and applied. 10 Food), this alone cannot serve as the decisive factor in
the resolution of whether or not they are related goods.
Goods are related when they belong to the same class Emphasis should be on the similarity of the products
or have the same descriptive properties; when they involved and not on the arbitrary classification or general
possess the same physical attributes or essential description of their properties or characteristics." The
characteristics with reference to their form, composition, Court, therefore, concluded that "In fine, We hold that
texture or quality. They may also be related because the businesses of the parties are non-competitive and
they serve the same purpose or are sold in grocery their products so unrelated that the use of Identical
trademarks is not likely to give rise to confusion, much Buhay, admitted that the color of the "ESSO" used by
less cause damage to petitioner." the plaintiff for the oval design where the blue word
ESSO is contained is the distinct and unique kind of
In the situation before us, the goods are obviously blue. In his answer to the trial court's question, Mr.
different from each other with "absolutely no iota of Buhay informed the court that the plaintiff never used its
similitude" 19 as stressed in respondent court's judgment. trademark on any product where the combination of
They are so foreign to each other as to make it unlikely colors is similar to the label of the Esso cigarettes," and
that purchasers would think that petitioner is the "Another witness for the plaintiff, Mr. Tengco, testified
manufacturer of respondent's goods.ït¢@lFº The mere that generally, the plaintiff's trademark comes all in either
fact that one person has adopted and used a trademark red, white, blue or any combination of the three colors. It
on his goods does not prevent the adoption and use of is to be pointed out that not even a shade of these colors
the same trademark by others on unrelated articles of a appears on the trademark of the appellant's cigarette.
different kind. 20 The only color that the appellant uses in its trademark is
green." 24
Petitioner uses the trademark ESSO and holds
certificate of registration of the trademark for petroleum Even the lower court, which ruled initially for petitioner,
products, including aviation gasoline, grease, cigarette found that a "noticeable difference between the brand
lighter fluid and other various products such as plastics, ESSO being used by the defendants and the trademark
chemicals, synthetics, gasoline solvents, kerosene, ESSO of the plaintiff is that the former has a rectangular
automotive and industrial fuel, bunker fuel, lubricating oil, background, while in that of the plaintiff the word ESSO
fertilizers, gas, alcohol, insecticides and the ESSO is enclosed in an oval background."
Gasul" burner, while respondent's business is solely for
the manufacture and sale of the unrelated product of In point of fact and time, the Court's dismissal of the
cigarettes. The public knows too well that petitioner petition at bar was presaged by its Resolution of May 21,
deals solely with petroleum products that there is no 1979 dismissing by minute resolution the petition for
possibility that cigarettes with ESSO brand will be review for lack of merit in the Identical case of Shell
associated with whatever good name petitioner's ESSO Company of the Philippines, Ltd vs. Court of Appeals  25,
trademark may have generated. Although petitioner's wherein the Court thereby affirmed the patent office's
products are numerous, they are of the same class or registration of the trademark SHELL as used in the
line of merchandise which are non-competing with cigarettes manufactured by therein respondent Fortune
respondent's product of cigarettes, which as pointed out Tobacco Corporation notwithstanding the therein
in the appealed judgment is beyond petitioner's "zone of petitioner Shell Company's opposition thereto as the
potential or natural and logical expansion" 21 When a prior registrant of the same trademark for its gasoline
trademark is used by a party for a product in which the and other petroleum trademarks, on the strength of the
other party does not deal, the use of the same trademark controlling authority of Acoje Mining Co. vs. Director of
on the latter's product cannot be validly objected to. 22 Patents, Supra, and the same rationale that "(I)n the
Philippines, where buyers of appellee's (Fortune Corp.'s)
Another factor that shows that the goods involved are cigarettes, which are low cost articles, can be more
non-competitive and non-related is the appellate court's numerous compared to buyers of the higher priced
finding that they flow through different channels of trade, petroleum and chemical products of appellant (Shell Co.)
thus: "The products of each party move along and are and where appellant (Shell) is known to be in the
disposed through different channels of distribution. The business of selling petroleum and petroleum-based
(petitioner's) products are distributed principally through chemical products, and no others, it is difficult to
gasoline service and lubrication stations, automotive conceive of confusion in the minds of the buying public in
shops and hardware stores. On the other hand, the the sense it can be thought that appellant (Shell) is the
(respondent's) cigarettes are sold in sari-sari stores, manufacturer of appellee's (Fortune's) cigarettes, or that
grocery stores, and other small distributor outlets. appellee (Fortune) is the manufacturer or processor of
(Respondent's) cigarettes are even peddled in the appellant's (Shell's) petroleum and chemical products." 26
streets while (petitioner's) 'gasul' burners are not. Finally,
there is a marked distinction between oil and tobacco, as ACCORDINGLY, the petition is dismissed and the
well as between petroleum and cigarettes. Evidently, in decision of respondent Court of Appeals is hereby
kind and nature the products of (respondent) and of affirmed.
(petitioner) are poles apart." 23

Respondent court correctly ruled that 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. As pointed out by respondent court in
its appealed decision, "(A) witness for the plaintiff, Mr.
 DECISION

GONZAGA-REYES, J.:

Before us is a petition for review that seeks to set aside

the Decision 1 dated February 21, 1995 of the Court of
Appeals in CA-GR SP No. 30203, entitled "Canon
Kabushiki Kaisha v. NSR Rubber Corporation" and its
Resolution dated June 27, 1995 denying the motion for
reconsideration of herein petitioner Canon Kabushiki
Kaisha (petitioner).chanrob1es virtua1 1aw 1ibrary

On January 15, 1985, private respondent NSR Rubber

Corporation (private respondent) filed an application for
registration of the mark CANON for sandals in the
Bureau of Patents, Trademarks, and Technology
Transfer (BPTTT). A Verified Notice of Opposition was
filed by petitioner, a foreign corporation duly organized
and existing under the laws of Japan, alleging that it will
be damaged by the registration of the trademark CANON
in the name of private Respondent. The case was
docketed as Inter Partes Case No. 3043.

Petitioner moved to declare private respondent in default

for its failure to file its answer within the prescribed
period. The BPTTT then declared private respondent in
default and allowed petitioner to present its evidence ex-
parte.

Based on the records, the evidence presented by

petitioner consisted of its certificates of registration for
the mark CANON in various countries covering goods
belonging to class 2 (paints, chemical products, toner,
and dye stuff). Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing
its ownership over the trademark CANON also under
class 2.

On November 10, 1992, the BPTTT issued its decision

dismissing the opposition of petitioner and giving due
course to private respondent’s application for the
registration of the trademark CANON. On February 16,
1993 petitioner appealed the decision of the BPTTT with
public respondent Court of Appeals that eventually
affirmed the decision of BPTTT. Hence, this petition for
review.

Petitioner anchors this instant petition on these

grounds:chanrob1es virtual 1aw library

A) PETITIONER IS ENTITLED TO EXCLUSIVE USE OF

THE MARK CANON BECAUSE IT IS ITS TRADEMARK
AND IS USED ALSO FOR FOOTWEAR.
G.R. No. 120900. July 20, 2000.] B) TO ALLOW PRIVATE RESPONDENT TO
REGISTER CANON FOR FOOTWEAR IS TO
CANON KABUSHIKI KAISHA, Petitioner, v. COURT PREVENT PETITIONER FROM USING CANON FOR
OF APPEALS and NSR RUBBER VARIOUS KINDS OF FOOTWEAR, WHEN IN FACT,
CORPORATION, Respondents. PETITIONER HAS EARLIER USED SAID MARK FOR
SAID GOODS.
Petitioner counters that notwithstanding the dissimilarity
C) PETITIONER IS ALSO ENTITLED TO THE RIGHT of the products of the parties, the trademark owner is
TO EXCLUSIVELY USE CANON TO PREVENT entitled to protection when the use of by the junior user
CONFUSION OF BUSINESS. "forestalls the normal expansion of his business." 7
Petitioner’s opposition to the registration of its trademark
D) PETITIONER IS ALSO ENTITLED TO THE CANON by private respondent rests upon petitioner’s
EXCLUSIVE USE OF CANON BECAUSE IT FORMS insistence that it would be precluded from using the mark
PART OF ITS CORPORATE NAME, PROTECTED BY CANON for various kinds of footwear, when in fact it has
THE PARIS CONVENTION. 2 earlier used said mark for said goods. Stretching this
argument, petitioner claims that it is possible that the
The BPTTT and the Court of Appeals share the opinion public could presume that petitioner would also produce
that the trademark "CANON" as used by petitioner for its a wide variety of footwear considering the diversity of its
paints, chemical products, toner, and dyestuff, can be products marketed worldwide.
used by private respondent for its sandals because the
products of these two parties are dissimilar. Petitioner We do not agree. Even in this instant petition, except for
protests the appropriation of the mark CANON by private its bare assertions, petitioner failed to attach evidence
respondent on the ground that petitioner has used and that would convince this Court that petitioner has also
continues to use the trademark CANON on its wide embarked in the production of footwear products. We
range of goods worldwide. Allegedly, the corporate name quote with approval the observation of the Court of
or tradename of petitioner is also used as its trademark Appeals that:jgc:chanrobles.com.ph
on diverse goods including footwear and other related
products like shoe polisher and polishing agents. To lend "The herein petitioner has not made known that it
credence to its claim, petitioner points out that it has intends to venture into the business of producing
branched out in its business based on the various goods sandals. This is clearly shown in its Trademark Principal
carrying its trademark CANON 3 , including footwear Register (Exhibit "U") where the products of the said
which petitioner contends covers sandals, the goods for petitioner had been clearly and specifically described as
which private respondent sought to register the mark "Chemical products, dyestuffs, pigments, toner
CANON. For petitioner, the fact alone that its trademark developing preparation, shoe polisher, polishing agent."
CANON is carried by its other products like footwear, It would be taxing one’s credibility to aver at this point
shoe polisher and polishing agents should have that the production of sandals could be considered as a
precluded the BPTTT from giving due course to the possible "natural or normal expansion" of its business
application of private Respondent.chanrob1es virtua1 operation." 8
1aw 1ibrary
In Faberge, Incorporated v. Intermediate Appellate
We find the arguments of petitioner to be unmeritorious. Court, 9 the Director of patents allowed the junior user to
Ordinarily, the ownership of a trademark or tradename is use the trademark of the senior user on the ground that
a property right that the owner is entitled to protect 4 as the briefs manufactured by the junior user, the product
mandated by the Trademark Law. 5 However, when a for which the trademark BRUTE was sought to be
trademark is used by a party for a product in which the registered, was unrelated and non-competing with the
other party does not deal, the use of the same trademark products of the senior user consisting of after shave
on the latter’s product cannot be validly objected to. 6 lotion, shaving cream, deodorant, talcum powder, and
toilet soap. The senior user vehemently objected and
A review of the records shows that with the order of the claimed that it was expanding its trademark to briefs and
BPTTT declaring private respondent in default for failure argued that permitting the junior user to register the
to file its answer, petitioner had every opportunity to same trademark would allow the latter to invade the
present ex-parte all of its evidence to prove that its senior user’s exclusive domain. In sustaining the Director
certificates of registration for the trademark CANON of Patents, this Court said that since" (the senior user)
cover footwear. The certificates of registration for the has not ventured in the production of briefs, an item
trademark CANON in other countries and in the which is not listed in its certificate of registration, (the
Philippines as presented by petitioner, clearly showed senior user), cannot and should not be allowed to feign
that said certificates of registration cover goods that (the junior user) had invaded (the senior user’s)
belonging to class 2 (paints, chemical products, toner, exclusive domain." 10 We reiterated the principle that
dyestuff). On this basis, the BPTTT correctly ruled that the certificate of registration confers upon the trademark
since the certificate of registration of petitioner for the owner the exclusive right to use its own symbol only to
trademark CANON covers class 2 (paints, chemical those goods specified in the certificate, subject to the
products, toner, dyestuff), private respondent can use conditions and limitations stated therein. 11 Thus, the
the trademark CANON for its goods classified as class exclusive right of petitioner in this case to use the
25 (sandals). Clearly, there is a world of difference trademark CANON is limited to the products covered by
between the paints, chemical products, toner, and its certificate of registration.chanrob1es virtua1 1aw
dyestuff of petitioner and the sandals of 1ibrary
private Respondent.
Petitioner further argues that the alleged diversity of its shops and hardware stores. On the other hand, the
products all over the world makes it plausible that the (respondent’s) cigarettes are sold in sari-sari stores,
public might be misled into thinking that there is some grocery store, and other small distributor outlets.
supposed connection between private respondent’s (Respondent’s) cigarettes are even peddled in the
goods and petitioner. Petitioner is apprehensive that streets while (petitioner’s) ‘gasul’ burners are not. Finally,
there could be confusion as to the origin of the goods, as there is a marked distinction between oil and tobacco, as
well as confusion of business, if private respondent is well as between petroleum and cigarettes. Evidently, in
allowed to register the mark CANON. In such a case, kind and nature the products of (respondent) and of
petitioner would allegedly be immensely prejudiced if (petitioner) are poles apart." 22
private respondent would be permitted to take "a free
ride on, and reap the advantages of, the goodwill and Undoubtedly, the paints, chemical products, toner and
reputation of petitioner Canon." 12 In support of the dyestuff of petitioner that carry the trademark CANON
foregoing arguments, petitioner invokes the rulings in are unrelated to sandals, the product of
Sta. Ana v. Maliwat 13, Ang v. Teodoro 14 and Converse private Respondent. We agree with the BPTTT, following
Rubber Corporation v. Universal Rubber Products, Inc. the Esso doctrine, when it noted that the two classes of
15 . products in this case flow through different trade
channels. The products of petitioner are sold through
The likelihood of confusion of goods or business is a special chemical stores or distributors while the products
relative concept, to be determined only according to the of private respondent are sold in grocery stores, sari-sari
particular, and sometimes peculiar, circumstances of stores and department stores. 23 Thus, the evident
each case. 16 Indeed, in trademark law cases, even disparity of the products of the parties in the case at bar
more than in other litigation, precedent must be studied renders unfounded the apprehension of petitioner that
in the light of the facts of the particular case. 17 Contrary confusion of business or origin might occur if private
to petitioner’s supposition, the facts of this case will show respondent is allowed to use the mark CANON.
that the cases of Sta. Ana v. Maliwat, Ang v. Teodoro
and Converse Rubber Corporation v. Universal Rubber In its bid to bar the registration of private respondent of
Products, Inc. are hardly in point. The just cited cases the mark CANON, petitioner invokes the protective
involved goods that were confusingly similar, if not mantle of the Paris Convention. Petitioner asserts that it
identical, as in the case of Converse Rubber Corporation has the exclusive right to the mark CANON because it
v. Universal Rubber Products, Inc. Here, the products forms part of its corporate name or tradename, protected
involved are so unrelated that the public will not be by Article 8 of the Paris Convention, to wit:chanrob1es
misled that there is the slightest nexus between virtua1 1aw 1ibrary
petitioner and the goods of private Respondent.
"A tradename shall be protected in all the countries of
In cases of confusion of business or origin, the question the Union without the obligation of filing or registration,
that usually arises is whether the respective goods or whether or not it forms part of a trademark."cralaw
services of the senior user and the junior user are so virtua1aw library
related as to likely cause confusion of business or origin,
and thereby render the trademark or tradenames Public respondents BPTTT and the Court of Appeals
confusingly similar. 18 Goods are related when they allegedly committed an oversight when they required
belong to the same class or have the same descriptive petitioner to prove that its mark is a well-known mark at
properties; when they possess the same physical the time the application of private respondent was filed.
attributes or essential characteristics with reference to Petitioner questions the applicability of the guidelines
their form, composition, texture or quality. 19 They may embodied in the Memorandum of then Minister of Trade
also be related because they serve the same purpose or and Industry Roberto Ongpin (Ongpin) dated October
are sold in grocery stores. 20 25, 1983 which according to petitioner implements
Article 6bis of the Paris Convention, the provision
Thus, in Esso Standard Eastern, Inc. v. Court of referring to the protection of trademarks. The
Appeals, this Court ruled that the petroleum products on memorandum reads:jgc:chanrobles.com.ph
which the petitioner therein used the trademark ESSO,
and the product of respondent, cigarettes are "so foreign "a) the mark must be internationally known;
to each other as to make it unlikely that purchasers
would think that petitioner is the manufacturer of b) the subject of the right must be a trademark, not a
respondent’s goods "21 . Moreover, the fact that the patent or copyright or anything else;
goods involved therein flow through different channels of
trade highlighted their dissimilarity, a factor explained in c) the mark must be for use in the same or similar class
this wise:jgc:chanrobles.com.ph of goods;

"The products of each party move along and are d) the person claiming must be the owner of the
disposed through different channels of distribution. The mark."cralaw virtua1aw library
(petitioner’s) products are distributed principally through
gasoline service and lubrication stations, automotive According to petitioner, it should not be required to prove
that its trademark is well-known and that the products The term "trademark" is defined by RA 166, the
are not similar as required by the quoted memorandum. Trademark Law, as including "any word, name, symbol,
Petitioner emphasizes that the guidelines in the emblem, sign or device or any combination thereof
memorandum of Ongpin implement Article 6bis of the adopted and used by a manufacturer or merchant to
Paris Convention, the provision for the protection of identify his goods and distinguish them for those
trademarks, not tradenames. Article 6bis of the Paris manufactured, sold or dealt in by others." 26 Tradename
Convention states:chanrob1es virtual 1aw library is defined by the same law as including "individual
names and surnames, firm names, tradenames, devices
(1) The countries of the Union undertake, either or words used by manufacturers, industrialists,
administratively if their legislation so permits, or at the merchants, agriculturists, and others to identify their
request of an interested party, to refuse or to cancel the business, vocations, or occupations; the names or titles
registration and to prohibit the use of a trademark which lawfully adopted and used by natural or juridical persons,
constitutes a reproduction, imitation or translation, liable unions, and any manufacturing, industrial, commercial,
to create confusion, of a mark considered by the agricultural or other organizations engaged in trade or
competent authority of the country of registration or use commerce." 27 Simply put, a trade name refers to the
to be well-known in that country as being already the business and its goodwill; a trademark refers to the
mark of a person entitled to the benefits of the present goods. 28
Convention and used for identical or similar goods.
These provisions shall also apply when the essential part The Convention of Paris for the Protection of Industrial
of the mark constitutes a reproduction of any such well- Property, otherwise known as the Paris Convention, of
known mark or an imitation liable to create confusion which both the Philippines and Japan, the country of
therewith. petitioner, are signatories 29 , is a multilateral treaty that
seeks to protect industrial property consisting of patents,
(2) A period of at least five years from the date of utility models, industrial designs, trademarks, service
registration shall be allowed for seeking the cancellation marks, trade names and indications of source or
of such a mark. The countries of the Union may provide appellations of origin, and at the same time aims to
for a period within which the prohibition of use must be repress unfair competition. 30 We agree with public
sought. respondents that the controlling doctrine with respect to
the applicability of Article 8 of the Paris Convention is
(3) No time limit shall be fixed for seeking the that established in Kabushi Kaisha Isetan v. Intermediate
cancellation or the prohibition of the use of marks or Appellate Court. 31 As pointed out by the
used in bad faith."cralaw virtua1aw library BPTTT:jgc:chanrobles.com.ph

Petitioner insists that what it seeks is the protection of "Regarding the applicability of Article 8 of the Paris
Article 8 of the Paris Convention, the provision that Convention, this Office believes that there is no
pertains to the protection of tradenames. Petitioner automatic protection afforded an entity whose tradename
believes that the appropriate memorandum to consider is is alleged to have been infringed through the use of that
that issued by the then Minister of Trade and Industry, name as a trademark by a local entity.
Luis Villafuerte, directing the Director of patents
to:jgc:chanrobles.com.ph In Kabushiki Kaisha Isetan v. The Intermediate Appellate
Court, et. al., G.R. No. 75420, 15 November 1991, the
"reject all pending applications for Philippine registration Honorable Supreme Court held that:chanrob1es virtual
of signature and other world famous trademarks by 1aw library
applicants other than the original owners or
users."cralaw virtua1aw library ‘The Paris Convention for the Protection of Industrial
Property does not automatically exclude all countries of
As far as petitioner is concerned, the fact that its the world which have signed it from using a tradename
tradename is at risk would call for the protection granted which happens to be used in one country. To illustrate —
by Article 8 of the Paris Convention. Petitioner calls if a taxicab or bus company in a town in the United
attention to the fact that Article 8, even as embodied in Kingdom or India happens to use the tradename "Rapid
par. 6, sec. 37 of RA 166, mentions no requirement of Transportation", it does not necessarily follow that
similarity of goods. Petitioner claims that the reason "Rapid" can no longer be registered in Uganda, Fiji, or
there is no mention of such a requirement, is "because the Philippines.
there is a difference between the referent of the name
and that of the mark" 24 and that "since Art. 8 protects This office is not unmindful that in the Treaty of Paris for
the tradename in the countries of the Union, such as the Protection of Intellectual Property regarding well-
Japan and the Philippines, Petitioner’s tradename should known marks and possible application thereof in this
be protected here."25cralaw:red case. Petitioner, as this office sees it, is trying to seek
refuge under its protective mantle, claiming that the
We cannot uphold petitioner’s position.chanrob1es subject mark is well known in this country at the time the
virtua1 1aw 1ibrary then application of NSR Rubber was filed.
However, the then Minister of Trade and Industry, the
Hon. Roberto V. Ongpin, issued a memorandum dated
25 October 1983 to the Director of Patents, a set of G.R. No. 112012            April 4, 2001
guidelines in the implementation of Article 6bis (sic) of
the Treaty of Paris. These conditions are:chanrob1es SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE
virtual 1aw library PHILIPPINES, INC., petitioners,
vs.
a) the mark must be internationally known; COURT OF APPEALS and CFC
CORPORATION., respondents.
b) the subject of the right must be a trademark, not a
patent or copyright or anything else;chanrob1es virtua1
1aw 1ibrary YNARES-SANTIAGO, J.:

c) the mark must be for use in the same or similar kinds This is a petition for review assailing the Decision of the
of goods; and Court of Appeals in CA-G.R. SP No. 24101,1 reversing
and setting aside the decision of the Bureau of Patents,
d) the person claiming must be the owner of the mark Trademarks and Technology Transfer (BPTTT), 2 which
(The Parties Convention Commentary on the Paris denied private respondent’s application for registration of
Convention. Article by Dr. Bogsch, Director General of the trade-mark, FLAVOR MASTER.
the World Intellectual Property Organization, Geneva,
Switzerland, 1985)’ On January 18, 1984, private respondent CFC
Corporation filed with the BPTTT an application for the
From the set of facts found in the records, it is ruled that registration of the trademark "FLAVOR MASTER" for
the Petitioner failed to comply with the third requirement instant coffee, under Serial No. 52994. The application,
of the said memorandum that is the mark must be for as a matter of due course, was published in the July 18,
use in the same or similar kinds of goods. The Petitioner 1988 issue of the BPTTT’s Official Gazette.
is using the mark "CANON" for products belonging to
class 2 (paints, chemical products) while the Respondent Petitioner Societe Des Produits Nestle, S.A., a Swiss
is using the same mark for sandals (class 25). Hence, company registered under Swiss laws and domiciled in
Petitioner’s contention that its mark is well-known at the Switzerland, filed an unverified Notice of
time the Respondent filed its application for the same Opposition,3 claiming that the trademark of private
mark should fail." 32 respondent’s product is "confusingly similar to its
trademarks for coffee and coffee extracts, to wit:
Petitioner assails the application of the case of Kabushi MASTER ROAST and MASTER BLEND."
Kaisha Isetan v. Intermediate Appellate Court to this
case. Petitioner points out that in the case of Kabushi
Likewise, a verified Notice of Opposition was filed by
Kaisha Isetan v. Intermediate Appellate Court, petitioner
Nestle Philippines, Inc., a Philippine corporation and a
therein was found to have never at all conducted its
licensee of Societe Des Produits Nestle S.A., against
business in the Philippines unlike herein petitioner who
CFC’s application for registration of the trademark
has extensively conducted its business here and also
FLAVOR MASTER.4 Nestle claimed that the use, if any,
had its trademark registered in this country. Hence,
by CFC of the trademark FLAVOR MASTER and its
petitioner submits that this factual difference renders
registration would likely cause confusion in the trade; or
inapplicable our ruling in the case of Kabushi Kaisha
deceive purchasers and would falsely suggest to the
Isetan v. Intermediate Appellate Court that Article 8 of
purchasing public a connection in the business of Nestle,
the Paris Convention does not automatically extend
as the dominant word present in the three (3)
protection to a tradename that is in danger of being
trademarks is "MASTER"; or that the goods of CFC
infringed in a country that is also a signatory to said
might be mistaken as having originated from the latter.
treaty. This contention deserves scant consideration.
Suffice it to say that the just quoted pronouncement in
the case of Kabushi Kaisha Isetan v. Intermediate In answer to the two oppositions, CFC argued that its
Appellate Court, was made independent of the factual trademark, FLAVOR MASTER, is not confusingly similar
finding that petitioner in said case had not conducted its with the former’s trademarks, MASTER ROAST and
business in this country. MASTER BLEND, alleging that, "except for the word
MASTER (which cannot be exclusively appropriated by
WHEREFORE, in view of the foregoing, the instant any person for being a descriptive or generic name), the
petition for review on certiorari is DENIED for lack of other words that are used respectively with said word in
merit. the three trademarks are very different from each other –
in meaning, spelling, pronunciation, and sound". CFC
SO ORDERED.c further argued that its trademark, FLAVOR MASTER, "is
clearly very different from any of Nestle’s alleged
trademarks MASTER ROAST and MASTER BLEND,
especially when the marks are viewed in their entirety,
by considering their pictorial representations, color appears on top of the word "BLEND" and below
schemes and the letters of their respective labels." it are the words "100% pure instant coffee"
printed in small letters.
In its Decision No. 90-47 dated December 27, 1990, the
BPTTT denied CFC’s application for registration. 5 CFC From the foregoing description, while the
elevated the matter to the Court of Appeals, where it was contending marks depict the same product, the
docketed as CA-G.R. SP No. 24101. glaring dissimilarities in their presentation far
outweigh and dispel any aspect of similitude. To
The Court of Appeals defined the issue thus: "Does borrow the words of the Supreme Court in
appellant CFC’s trade dress bear a striking resemblance American Cyanamid Co. v. Director of Patents
with appellee’s trademarks as to create in the purchasing (76 SCRA 568), appellant CFC’s and appellees’
public’s mind the mistaken impression that both coffee labels are entirely different in size, background,
products come from one and the same source?" colors, contents and pictorial arrangement; in
short, the general appearances of the labels
bearing the respective trademarks are so distinct
As stated above, the Court of Appeals, in the assailed
from each other that appellees cannot assert
decision dated September 23, 1993, reversed Decision
that the dominant features, if any, of its
No. 90-47 of the BPTTT and ordered the Director of
trademarks were used or appropriated in
Patents to approve CFC’s application. The Court of
appellant CFC’s own. The distinctions are so
Appeals ruled:
well-defined so as to foreclose any probability or
likelihood of confusion or deception on the part
Were We to take even a lackadaisical glance at of the normally intelligent buyer when he or she
the overall appearance of the contending marks, encounters both coffee products at the grocery
the physical discrepancies between appellant shelf. The answer therefore to the query is a
CFC’s and appellee’s respective logos are so clear-cut NO.6
ostensible that the casual purchaser cannot
likely mistake one for the other. Appellant CFC’s
Petitioners are now before this Court on the following
label (Exhibit "4") is predominantly a blend of
assignment of errors:
dark and lighter shade of orange where the
words "FLAVOR MASTER", "FLAVOR"
appearing on top of "MASTER", shaded in 1. RESPONDENT COURT GRAVELY ERRED
mocha with thin white inner and outer sidings IN REVERSING AND SETTING ASIDE THE
per letter and identically lettered except for the DECISION (NO. 90-47) OF THE DIRECTOR OF
slightly protruding bottom curve of the letter "S" THE BUREAU OF PATENTS, TRADEMARKS
adjoining the bottom tip of the letter "A" in the AND TECHNOLOGY TRANSFER (BPTTT)
word "MASTER", are printed across the top of a DATED DECEMBER 27, 1990.
simmering red coffee cup. Underneath
"FLAVOR MASTER" appears "Premium Instant 2. RESPONDENT COURT ERRED IN FINDING
Coffee" printed in white, slim and slanted letters. THAT APPELLANT CFC’S TRADE DRESS IS
Appellees’ "MASTER ROAST" label (Exhibit BEYOND THE SCOPE OF THE
"7"), however, is almost double the width of PROSCRIPTION LAID DOWN BY
appellant CFC’s. At the top is printed in brown JURISPRUDENCE AND THE TRADEMARK
color the word "NESCAFE" against a white LAW.
backdrop. Occupying the center is a square-
shaped configuration shaded with dark brown 3. RESPONDENT COURT ERRED IN
and picturing a heap of coffee beans, where the HOLDING THAT THE TOTALITY RULE,
word "MASTER" is inscribed in the middle. RATHER THAN THE TEST OF DOMINANCY,
"MASTER" in appellees’ label is printed in taller APPLIES TO THE CASE.
capital letters, with the letter "M" further
capitalized. The letters are shaded with red and 4. RESPONDENT COURT ERRED IN
bounded with thin gold-colored inner and outer INVOKING THE TOTALITY RULE APPLIED IN
sidings. Just above the word "MASTER" is a red THE CASES OF BRISTOL MYERS V.
window like portrait of what appears to be a DIRECTOR OF PATENTS, ET AL. (17 SCRA
coffee shrub clad in gold. Below the "MASTER" 128), MEAD JOHNSON & CO. V. NVJ VAN
appears the word "ROAST" impressed in DORF LTD., (7 SCRA 768) AND AMERICAN
smaller, white print. And further below are the CYANAMID CO. V. DIRECTOR OF PATENTS
inscriptions in white: "A selection of prime (76 SCRA 568).
Arabica and Robusta coffee." With regard to
appellees’ "MASTER BLEND" label (Exhibit "6")
of which only a xeroxed copy is submitted, the The petition is impressed with merit.
letters are bolder and taller as compared to
appellant CFC’s and the word "MASTER"
A trademark has been generally defined as "any word, The law prescribes a more stringent standard in that
name, symbol or device adopted and used by a there should not only be confusing similarity but that it
manufacturer or merchant to identify his goods and should not likely cause confusion or mistake or deceive
distinguish them from those manufactured and sold by purchasers.
others."7
Hence, the question in this case is whether there is a
A manufacturer’s trademark is entitled to protection. As likelihood that the trademark FLAVOR MASTER may
Mr. Justice Frankfurter observed in the case cause confusion or mistake or may deceive purchasers
of Mishawaka Mfg. Co. v. Kresge Co.:8 that said product is the same or is manufactured by the
same company. In other words, the issue is whether the
The protection of trade-marks is the law’s trademark FLAVOR MASTER is a colorable imitation of
recognition of the psychological function of the trademarks MASTER ROAST and MASTER BLEND.
symbols. If it is true that we live by symbols, it is
no less true that we purchase goods by them. A Colorable imitation denotes such a close or ingenious
trade-mark is a merchandising short-cut which imitation as to be calculated to deceive ordinary persons,
induces a purchaser to select what he wants, or or such a resemblance to the original as to deceive an
what he has been led to believe he wants. The ordinary purchaser giving such attention as a purchaser
owner of a mark exploits this human propensity usually gives, as to cause him to purchase the one
by making every effort to impregnate the supposing it to be the other.9 In determining if colorable
atmosphere of the market with the drawing imitation exists, jurisprudence has developed two kinds
power of a congenial symbol. Whatever the of tests - the Dominancy Test and the Holistic Test. 10 The
means employed, the aim is the same --- to test of dominancy focuses on the similarity of the
convey through the mark, in the minds of prevalent features of the competing trademarks which
potential customers, the desirability of the might cause confusion or deception and thus constitute
commodity upon which it appears. Once this is infringement. On the other side of the spectrum, the
attained, the trade-mark owner has something of holistic test mandates that the entirety of the marks in
value. If another poaches upon the commercial question must be considered in determining confusing
magnetism of the symbol he has created, the similarity.11
owner can obtain legal redress.
In the case at bar, the Court of Appeals held that:
Section 4 (d) of Republic Act No. 166 or the Trademark
Law, as amended, which was in force at the time, The determination of whether two trademarks
provides thus: are indeed confusingly similar must be taken
from the viewpoint of the ordinary purchasers
Registration of trade-marks, trade-names and who are, in general, undiscerningly rash in
service-marks on the principal register. - There buying the more common and less expensive
is hereby established a register of trade-marks, household products like coffee, and are
trade-names and service marks which shall be therefore less inclined to closely examine
known as the principal register. The owner of a specific details of similarities and dissimilarities
trade-mark, trade-name or service-mark used to between competing products. The Supreme
distinguish his goods, business or services from Court in Del Monte Corporation v. CA, 181
the goods, business or services of others shall SCRA 410, held that:
have the right to register the same on the
principal register, unless it: "The question is not whether the two
articles are distinguishable by their
x x x           x x x           x x x labels when set side by side but whether
the general confusion made by the
(d) Consists of or comprises a mark or trade- article upon the eye of the casual
name which so resembles a mark or trade-name purchaser who is unsuspicious and off
registered in the Philippines or a mark or trade- his guard, is such as to likely result in
name previously used in the Philippines by his confounding it with the original. As
another and not abandoned, as to be likely, observed in several cases, the general
when applied to or used in connection with the impression of the ordinary purchaser,
goods, business or services of the applicant, to buying under the normally prevalent
cause confusion or mistake or to deceive conditions in trade and giving the
purchasers; attention such purchasers usually give in
buying that class of goods, is the
touchstone."
x x x           x x x           x x x

From this perspective, the test of similarity is to

(Emphasis supplied)
consider the two marks in their entirety, as they
 appear in the respective labels, in relation to the facts and circumstances herein are peculiarly different
goods to which they are attached (Bristol Myers from those in the Del Monte case.
Company v. Director of Patents, et al., 17 SCRA
128, citing Mead Johnson & Co. v. NVJ Van In the same manner, the Court of Appeals erred in
Dorp, Ltd., et al., 7 SCRA 768). The mark must applying the totality rule as defined in the cases
be considered as a whole and not as dissected. of Bristol Myers v. Director of Patents;17 Mead Johnson &
If the buyer is deceived, it is attributable to the Co. v. NVJ Van Dorf Ltd.;18 and American Cyanamid Co.
marks as a totality, not usually to any part of it v. Director of Patents.19 The totality rule states that "the
(Del Monte Corp. v. CA, supra), as what test is not simply to take their words and compare the
appellees would want it to be when they spelling and pronunciation of said words. In determining
essentially argue that much of the confusion whether two trademarks are confusingly similar, the two
springs from appellant CFC’s use of the word marks in their entirety as they appear in the respective
"MASTER" which appellees claim to be the labels must be considered in relation to the goods to
dominant feature of their own trademarks that which they are attached; the discerning eye of the
captivates the prospective consumers. Be it observer must focus not only on the predominant words
further emphasized that the discerning eye of but also on the other features appearing on both
the observer must focus not only on the labels."20
predominant words but also on the other
features appearing in both labels in order that he As this Court has often declared, each case must be
may draw his conclusion whether one is studied according to the peculiar circumstances of each
confusingly similar to the other (Mead Johnson case. That is the reason why in trademark cases,
& Co. v. NVJ Van Dorp, Ltd., supra).12 jurisprudential precedents should be applied only to a
case if they are specifically in point.
The Court of Appeals applied some judicial precedents
which are not on all fours with this case. It must be In the above cases cited by the Court of Appeals to
emphasized that in infringement or trademark cases in justify the application of the totality or holistic test to this
the Philippines, particularly in ascertaining whether one instant case, the factual circumstances are substantially
trademark is confusingly similar to or is a colorable different. In the Bristol Myers case, this Court held that
imitation of another, no set rules can be deduced. Each although both BIOFERIN and BUFFERIN are primarily
case must be decided on its own merits. 13 In Esso used for the relief of pains such as headaches and colds,
Standard, Inc. v. Court of Appeals,14 we ruled that the and their names are practically the same in spelling and
likelihood of confusion is a relative concept; to be pronunciation, both labels have strikingly different
determined only according to the particular, and backgrounds and surroundings. In addition, one is
sometimes peculiar, circumstances of each case. In dispensable only upon doctor’s prescription, while the
trademark cases, even more than in any other litigation, other may be purchased over-the-counter.
precedent must be studied in light of the facts of the
particular case. The wisdom of the likelihood of
confusion test lies in its recognition that each trademark In the Mead Johnson case, the differences between
infringement case presents its own unique set of facts. ALACTA and ALASKA are glaring and striking to the
Indeed, the complexities attendant to an accurate eye. Also, ALACTA refers to "Pharmaceutical
assessment of likelihood of confusion require that the Preparations which Supply Nutritional Needs," falling
entire panoply of elements constituting the relevant under Class 6 of the official classification of Medicines
factual landscape be comprehensively examined.15 and Pharmaceutical Preparations to be used as
prescribed by physicians. On the other hand, ALASKA
refers to "Foods and Ingredients of Foods" falling under
The Court of Appeals’ application of the case of Del Class 47, and does not require medical prescription.
Monte Corporation v. Court of Appeals 16 is, therefore,
misplaced. In Del Monte, the issue was about the
alleged similarity of Del Monte’s logo with that of In the American Cyanamid case, the word SULMET is
Sunshine Sauce Manufacturing Industries. Both distinguishable from the word SULMETINE, as the
corporations market the catsup product which is an former is derived from a combination of the syllables
inexpensive and common household item. "SUL" which is derived from sulfa and "MET" from
methyl, both of which are chemical compounds present
in the article manufactured by the contending parties.
Since Del Monte alleged that Sunshine’s logo was This Court held that the addition of the syllable "INE" in
confusingly similar to or was a colorable imitation of the respondent’s label is sufficient to distinguish
former’s logo, there was a need to go into the details of respondent’s product or trademark from that of
the two logos as well as the shapes of the labels or petitioner. Also, both products are for medicinal
marks, the brands printed on the labels, the words or veterinary use and the buyer will be more wary of the
lettering on the labels or marks and the shapes and nature of the product he is buying. In any case, both
colors of the labels or marks. The same criteria, products are not identical as SULMET’s label indicates
however, cannot be applied in the instant petition as the that it is used in a drinking water solution while that of
SULMETINE indicates that they are tablets.
It cannot also be said that the products in the above the colors orange and mocha while that of Nestle’s uses
cases can be bought off the shelf except, perhaps, for red and brown. The application of the totality or holistic
ALASKA. The said products are not the usual "common test is improper since the ordinary purchaser would not
and inexpensive" household items which an be inclined to notice the specific features, similarities or
"undiscerningly rash" buyer would unthinkingly buy.In the dissimilarities, considering that the product is an
case at bar, other than the fact that both Nestle’s and inexpensive and common household item.
CFC’s products are inexpensive and common household
items, the similarity ends there. What is being It must be emphasized that the products bearing the
questioned here is the use by CFC of the trademark trademarks in question are "inexpensive and common"
MASTER. In view of the difficulty of applying household items bought off the shelf by "undiscerningly
jurisprudential precedents to trademark cases due to the rash" purchasers. As such, if the ordinary purchaser is
peculiarity of each case, judicial fora should not readily "undiscerningly rash", then he would not have the time
apply a certain test or standard just because of seeming nor the inclination to make a keen and perceptive
similarities. As this Court has pointed above, there could examination of the physical discrepancies in the
be more telling differences than similarities as to make a trademarks of the products in order to exercise his
jurisprudential precedent inapplicable. choice.

Nestle points out that the dominancy test should have While this Court agrees with the Court of Appeals’
been applied to determine whether there is a confusing detailed enumeration of differences between the
similarity between CFC’s FLAVOR MASTER and respective trademarks of the two coffee products, this
Nestle’s MASTER ROAST and MASTER BLEND. Court cannot agree that totality test is the one applicable
in this case. Rather, this Court believes that the
We agree. dominancy test is more suitable to this case in light of its
peculiar factual milieu.
As the Court of Appeals itself has stated, "[t]he
determination of whether two trademarks are indeed Moreover, the totality or holistic test is contrary to the
confusingly similar must be taken from the viewpoint of elementary postulate of the law on trademarks and unfair
the ordinary purchasers who are, in general, competition that confusing similarity is to be determined
undiscerningly rash in buying the more common and less on the basis of visual, aural, connotative comparisons
expensive household products like coffee, and are and overall impressions engendered by the marks in
therefore less inclined to closely examine specific details controversy as they are encountered in the realities of
of similarities and dissimilarities between competing the marketplace.23 The totality or holistic test only relies
products."21 on visual comparison between two trademarks whereas
the dominancy test relies not only on the visual but also
The basis for the Court of Appeals’ application of the on the aural and connotative comparisons and overall
totality or holistic test is the "ordinary purchaser" buying impressions between the two trademarks.
the product under "normally prevalent conditions in
trade" and the attention such products normally elicit For this reason, this Court agrees with the BPTTT when
from said ordinary purchaser. An ordinary purchaser or it applied the test of dominancy and held that:
buyer does not usually make such scrutiny nor does he
usually have the time to do so. The average shopper is From the evidence at hand, it is sufficiently
usually in a hurry and does not inspect every product on established that the word MASTER is the
the shelf as if he were browsing in a library.22 dominant feature of opposer’s mark. The word
MASTER is printed across the middle portion of
The Court of Appeals held that the test to be applied the label in bold letters almost twice the size of
should be the totality or holistic test reasoning, since the printed word ROAST. Further, the word
what is of paramount consideration is the ordinary MASTER has always been given emphasis in
purchaser who is, in general, undiscerningly rash in the TV and radio commercials and other
buying the more common and less expensive household advertisements made in promoting the product.
products like coffee, and is therefore less inclined to This can be gleaned from the fact that Robert
closely examine specific details of similarities and Jaworski and Atty. Ric Puno Jr.., the
dissimilarities between competing products. personalities engaged to promote the product,
are given the titles Master of the Game and
This Court cannot agree with the above reasoning. If the Master of the Talk Show, respectively. In due
ordinary purchaser is "undiscerningly rash" in buying time, because of these advertising schemes the
such common and inexpensive household products as mind of the buying public had come to learn to
instant coffee, and would therefore be "less inclined to associate the word MASTER with the opposer’s
closely examine specific details of similarities and goods.
dissimilarities" between the two competing products,
then it would be less likely for the ordinary purchaser to x x x. It is the observation of this Office that
notice that CFC’s trademark FLAVOR MASTER carries much of the dominance which the word
 MASTER has acquired through Opposer’s Robert Jaworski. Living Legend. A true hard
advertising schemes is carried over when the court hero. Fast on his feet. Sure in every shot
same is incorporated into respondent-applicant’s he makes. A master strategist. In one word,
trademark FLAVOR MASTER. Thus, when one unmatched.
looks at the label bearing the trademark
FLAVOR MASTER (Exh. 4) one’s attention is MASTER ROAST. Equally unmatched. Rich and
easily attracted to the word MASTER, rather deeply satisfying. Made from a unique
than to the dissimilarities that exist. Therefore, combination of the best coffee beans - Arabica
the possibility of confusion as to the goods which for superior taste and aroma, Robusta for
bear the competing marks or as to the origins strength and body. A masterpiece only
thereof is not farfetched. x x x.24 NESCAFE, the world’s coffee masters, can
create.
In addition, the word "MASTER" is neither a generic nor
a descriptive term. As such, said term can not be MASTER ROAST. Coffee perfection worthy of
invalidated as a trademark and, therefore, may be legally masters like Robert Jaworski.28
protected. Generic terms25 are those which constitute
"the common descriptive name of an article or In the art of conversation, Ric Puno Jr. is master.
substance," or comprise the "genus of which the Witty. Well-informed. Confident.
particular product is a species," or are "commonly used
as the name or description of a kind of goods," or "imply
reference to every member of a genus and the exclusion In the art of coffee-making, nothing equals
of individuating characters," or "refer to the basic nature Master Roast, the coffee masterpiece from
of the wares or services provided rather than to the more Nescafe, the world’s coffee masters. A unique
idiosyncratic characteristics of a particular product," and combination of the best coffee beans - Arabica
are not legally protectable. On the other hand, a term is for superior taste and aroma, Robusta for
descriptive26 and therefore invalid as a trademark if, as strength and body. Truly distinctive and rich in
understood in its normal and natural sense, it "forthwith flavor.
conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it Master Roast. Coffee perfection worthy of masters like
and does not know what it is," or "if it forthwith conveys Ric Puno Jr.29
an immediate idea of the ingredients, qualities or
characteristics of the goods," or if it clearly denotes what The term "MASTER", therefore, has acquired a certain
goods or services are provided in such a way that the connotation to mean the coffee products MASTER
consumer does not have to exercise powers of ROAST and MASTER BLEND produced by Nestle. As
perception or imagination. such, the use by CFC of the term "MASTER" in the
trademark for its coffee product FLAVOR MASTER is
Rather, the term "MASTER" is a suggestive term brought likely to cause confusion or mistake or even to deceive
about by the advertising scheme of Nestle. Suggestive the ordinary purchasers.
terms27 are those which, in the phraseology of one court,
require "imagination, thought and perception to reach a In closing, it may not be amiss to quote the case
conclusion as to the nature of the goods." Such terms, of American Chicle Co. v. Topps Chewing Gum, Inc.,30 to
"which subtly connote something about the product," are wit:
eligible for protection in the absence of secondary
meaning. While suggestive marks are capable of Why it should have chosen a mark that had long
shedding "some light" upon certain characteristics of the been employed by [plaintiff] and had become
goods or services in dispute, they nevertheless involve known to the trade instead of adopting some
"an element of incongruity," "figurativeness," or " other means of identifying its goods is hard to
imaginative effort on the part of the observer." see unless there was a deliberate purpose to
obtain some advantage from the trade that
This is evident from the advertising scheme adopted by [plaintiff] had built up. Indeed, it is generally true
Nestle in promoting its coffee products. In this case, that, as soon as we see that a second comer in
Nestle has, over time, promoted its products as "coffee a market has, for no reason that he can assign,
perfection worthy of masters like Robert Jaworski and plagiarized the "make-up" of an earlier comer,
Ric Puno Jr." we need no more; . . . [W]e feel bound to compel
him to exercise his ingenuity in quarters further
In associating its coffee products with the term afield.
"MASTER" and thereby impressing them with the
attributes of said term, Nestle advertised its products WHEREFORE, in view of the foregoing, the decision of
thus: the Court of Appeals in CA-G.R. SP No. 24101 is
REVERSED and SET ASIDE and the decision of the
Bureau of Patents, Trademarks and Technology
Transfer in Inter Partes Cases Nos. 3200 and 3202 is
REINSTATED.

SO ORDERED.

G.R. No. 217194, September 06, 2017 ]

SOCIETE DES PRODUITS, NESTLE, S.A.,

PETITIONER, VS. PUREGOLD PRICE CLUB, INC.,
RESPONDENT.

DECISION

CARPIO, ACTING C.J.:

The Case

Before the Court is a petition for review on

certiorari[1] assailing the 15 May 2014 Resolution [2] and
the 14 October 2014 Resolution[3] of the Court of
Appeals (CA) in CA-G.R. SP No. 134592.

The Facts

Petitioner Societe des Produits Nestle, S.A. (Nestle) is a

corporation organized and existing under the laws of
Switzerland which is engaged in the business of
marketing and selling of coffee, ice cream, chocolates,
cereals, sauces, soups, condiment mixes, dairy and non-
dairy products, etc.[4] Respondent Puregold Price Club,
Inc. (Puregold) is a corporation organized under
Philippine law which is engaged in the business of
trading goods such as consumer goods on wholesale or
on retail basis.[5]

On 14 June 2007, Puregold filed an application [6] for the

registration of the trademark "COFFEE MATCH" with the
Intellectual Property Office (IPO). The registration was
filed by Puregold for use on coffee, tea, cocoa, sugar,
artificial coffee, flour and preparations made from
cereals, bread, pastry and confectionery, and honey
under Class 30 of the International Classification of
Goods.[7]

On 5 December 2008, Nestle filed an

opposition[8] against Puregold's application for
registration. Nestle alleged that it is the exclusive owner
of the "COFFEE-MATE" trademark and that there is
confusing similarity between the "COFFEE-MATE"
trademark and Puregold's "COFFEE MATCH"
application.[9] Nestle alleged that "COFFEE-MATE" has contained in the power of attorney executed, should not
been declared an internationally well-known mark and be given weight unless accompanied by proof or
Puregold's use of "COFFEE MATCH" would indicate a evidence of his authority from Nestle.[18]
connection with the goods covered in Nestle's
"COFFEE-MATE" mark because of its distinct similarity. The ODG-IPO held that the competing marks are not
Nestle claimed that it would suffer damages if the confusingly similar and that consumers would unlikely be
application were granted since Puregold's "COFFEE deceived or confused from Puregold's use of "COFFEE
MATCH" would likely mislead the public that the mark MATCH." The ODG-IPO ruled that the common feature
originated from Nestle.[10] of "COFFEE" between the two marks cannot be
exclusively appropriated since it is generic or descriptive
The Decision of the Bureau of Legal Affairs- of the goods in question. The ODG-IPO ruled that there
Intellectual Property Office is no visual, phonetic, or conceptual similarity between
the two marks. Visual similarity is not present in the two
In a Decision[11] dated 16 April 2012, the Bureau of Legal marks, as Nestle's mark consists of a hyphenated word
Affairs-Intellectual Property Office (BLA-IPO) dismissed with the paired word being "MATE" while Puregold's
Nestle's opposition. The BLA-IPO ruled that Nestle's mark consists of the paired word "MATCH." While it is
opposition was defective because the verification and true that the first three letters "M," "A," and "T" are
certification against forum shopping attached to Nestle's common in the two marks, Puregold's mark, which are
opposition did not include a board of directors' resolution two separate words, with the capitalization of the letters
or secretary's certificate stating Mr. Dennis Jose R. "C" and "M," is readily apparent when "COFFEE
Barot's (Barot) authority to act on behalf of Nestle. The MATCH" and "COFFEE-MATE" are compared side by
BLA-IPO ruled that the defect in Nestle's opposition was side.[19]
sufficient ground to dismiss.[12]
The dispositive portion of the Decision states:
The BLA-IPO held that the word "COFFEE" as a mark, WHEREFORE, premises considered, the appeal is
or as part of a trademark, which is used on coffee and hereby DISMISSED. Let a copy of this Decision and the
similar or closely related goods, is not unique or highly records of this case be furnished and returned to the
distinctive. Nestle combined the word "COFFEE" with Director of Bureau of Legal Affairs for appropriate action.
the word "-MATE," while Puregold combined the word Further, let also the Director of the Bureau of
"COFFEE" with the word "MATCH." The BLA-IPO ruled Trademarks and the library of the Documentation,
that while both Nestle's "-MATE" and Puregold's Information and Technology Transfer Bureau be
"MATCH" contain the same first three letters, the last two furnished a copy of this Decision for information,
in Puregold's mark rendered a visual and aural character guidance, and records purposes.
that makes it easily distinguishable from Nestle's
"COFFEE-MATE."[13] Also, the letter "M" in Puregold's SO ORDERED.[20]
mark is written as an upper case character and the eyes On 14 April 2014, Nestle filed a Petition for
of a consumer would not be confused or deceived by Review[21] with the Court of Appeals.
Nestle's "COFFEE-MATE" where the letter "M" is written
in lower case. Consequently, the BLA-IPO held that the The Decision of the CA
consumer cannot mistake the mark and the products of
Nestle as those of Puregold's.[14] In a Resolution dated 15 May 2014, the CA dismissed
Nestle's petition for review on procedural grounds.
The dispositive portion of the Decision states:
WHEREFORE, premises considered, the instant The Resolution states:
opposition is hereby DISMISSED. Let the filewrapper of A perusal of the Petition for Review shows that:
Trademark Application Serial No. 4-2007-006134 be
returned, together with a copy of this DECISION, to the 1. the title thereof does not bear the name of party
Bureau of Trademarks for information and appropriate respondent Puregold Price Club, Inc.
action.
2. there is no board resolution and/or secretary's
SO ORDERED.[15] certificate to prove the authority of Dennis Jose R. Barot
On 11 June 2012, Nestle filed an appeal [16] with the to file the petition and to sign the Verification/Certification
Office of the Director General of the Intellectual Property of Non-Forum Shopping on behalf of petitioner-
Office (ODG-IPO). corporation; and

The Decision of the ODG-IPO 3. certified true copies of material [portions] of the record
which were mentioned therein were not attached, such
In a Decision[17] dated 7 February 2014, the Office of the as respondent's trademark application (rollo, p. 12),
ODG-IPO dismissed Nestle's appeal. The ODG-IPO held petitioner's Opposition thereto, Reply, the parties'
that Barot's authority to sign the certification against respective position papers, petitioner's appeal,
forum shopping was not sufficiently proven by Nestle. respondent's Comment, the parties' respective
The ODG-IPO ruled that Barot's authority, which was memoranda, etc.
The above considering, the Court RESOLVES to The CA dismissed Nestle's petition for review on the
DISMISS the petition outright.[22] ground that Nestle filed its petition for review after the
On 13 June 2014, Nestle filed a Motion for 15-day reglementary period required by Section 4, Rule
Reconsideration[23] which was denied by the CA on 14 43 of the Rules of Court.
October 2014.[24] The Resolution of the CA states:
We DENY the Motion for Reconsideration because it is The CA is wrong.
without merit.
Section 4, Rule 43 of the Rules of Court states:
The petitioner filed the Petition beyond the 15-day Section 4. Period of appeal. — The appeal shall be
reglementary period. taken within fifteen (15) days from notice of the award,
judgment, final order or resolution, or from the date of its
Under Rule 43, Section 4 of the Rules of Court, a party last publication, if publication is required by law for its
may file an appeal to this Court from quasi-judicial effectivity, or of the denial of petitioner's motion for new
bodies like the Intellectual Property Office, within 15 trial or reconsideration duly filed in accordance with the
days from receipt of the assailed judgment, order, or governing law of the court or agency a quo. Only one (1)
resolution. motion for reconsideration shall be allowed. Upon proper
motion and the payment of the full amount of the docket
Petitioner's counsel of record before the Intellectual fee before the expiration of the reglementary period, the
Property Office ("IPO"), the Sapalo Velez Bundang & Court of Appeals may grant an additional period of
Bulilan Law Offices ("SVBB Law Offices") received a fifteen (15) days only within which to file the petition for
copy of the assailed Decision on 19 February 2014. review. No further extension shall be granted except for
Thus, petitioner had until 7 March 2014 to appeal. While the most compelling reason and in no case to exceed
the Bengzon Negre & Untalan Law Offices ("Bengzon fifteen (15) days.
Law Offices") entered its appearance before the IPO, no During the proceedings in the ODG-IPO, Nestle
evidence was submitted before this Court showing that substituted its counsel, Sapalo, Velez, Bundang and
the Bengzon Law Offices was properly substituted as Bulilan Law Offices, with Bengzon, Negre and Untalan
petitioner's counsel in place of SVBB Law Offices Law Offices (Nestle's substituted counsel). On 20
(petitioner's counsel of record). Thus, the 15-day September 2013, Nestle's substituted counsel entered
reglementary period started to run from the date SVBB its appearance in the ODG-IPO. [27] In an Order[28] dated 1
Law Offices received a copy of the Decision. October 2013, the ODG-IPO noted the appearance of
Nestle's substituted counsel and included their
Clearly, when petitioner filed the Motion for Extension on appearance in the records of the case, to wit:
27 March 2014, and the Petition on 14 April 2014, the Wherefore, the APPEARANCE is hereby noted and
reglementary period had already lapsed. included in the records. Accordingly, let copies of all
pleadings, orders, notices and communications, be sent
Further, the petitioner obstinately refuses to cure the to the aforementioned address.
procedural infirmities we observed in the Resolution of
15 May 2014. SO ORDERED.[29]
The Decision of the ODG-IPO was received by Nestle's
SO ORDERED.[25] substituted counsel on 14 March 2014. On 27 March
The Issues 2014, within the 15-day reglementary period provided for
by Section 4 of Rule 43, Nestle filed a Motion for
Nestle presented the following issues in this petition: Extension of Time to file Verified Petition for
1. The Honorable Court of Appeals erred in dismissing Review[30] (motion for extension) with the CA. In a
petitioner's motion for reconsideration upon an Resolution[31] dated 3 April 2014, the CA granted Nestle's
erroneous appreciation of certain antecedent facts, and motion for extension and gave Nestle until 13 April 2014
similarly erred in dismissing the petition for review on to file its petition for review. The resolution states:
procedural grounds. The Court GRANTS petitioner's Motion for Extension of
Time to File Verified Petition for Review and gives
2. There is merit to the substantive issues raised by petitioner until April 13, 2014 within which to do so. [32]
petitioner, which deserves to be given due course and a Since 13 April 2014 fell on a Sunday, Nestle had until 14
final ruling.[26] April 2014, which was the next working day, within which
The Ruling of this Court to file the petition for review. Nestle did file the petition
for review with the CA on 14 April 2014. Accordingly, the
We deny the petition. CA committed a grave error when it ruled that Nestle's
petition for review was filed beyond the prescribed
Before discussing the substantive issues, we shall first period.
discuss the procedural issues in this case.
Nestle failed to properly execute a certification
Nestle filed its petition for review within the period against forum shopping as required by Section 5,
granted by the Court of Appeals. Rule 7 of the Rules of Court.
 body representing the stockholders. For corporations,
Section 5, Rule 7 of the Rules of Court provides: the authorized representative to sign the certification
Section 5. Certification against forum shopping. — The against forum shopping must be selected or authorized
plaintiff or principal party shall certify under oath in the collectively by the board of directors. In Eslaban, Jr.
complaint or other initiatory pleading asserting a claim v. Vda. de Onorio,[37] this Court ruled that if the real party
for relief, or in a sworn certification annexed thereto and in interest is a corporation, an officer of the corporation
simultaneously filed therewith: (a) that he has not acting alone has no authority to sign the certification
theretofore commenced any action or filed any claim against forum shopping. An officer of the corporation can
involving the same issues in any court, tribunal or quasi- only validly sign the certification against forum shopping
judicial agency and, to the best of his knowledge, no if he or she is authorized by the board of directors
such other action or claim is pending therein; (b) if there through a board resolution or secretary's certificate.
is such other pending action or claim, a complete In Gonzales v. Climax Mining Ltd.,[38] this Court ruled that
statement of the present status thereof; and (c) if he a board resolution authorizing a corporate officer to
should thereafter learn that the same or similar action or execute the certification against forum shopping is a
claim has been filed or is pending, he shall report that necessary requirement under the Rules. A certification
fact within five (5) days therefrom to the court wherein signed by a person who was not duly authorized by the
his aforesaid complaint or initiatory pleading has been board of directors renders the petition for review subject
filed. to dismissal.[39]

Failure to comply with the foregoing requirements The authority of the representative of a corporation to
shall not be curable by mere amendment of the sign the certification against forum shopping originates
complaint or other initiatory pleading but shall be from the board of directors through either a board of
cause for the dismissal of the case without directors' resolution or secretary's certificate which must
prejudice, unless otherwise provided, upon motion and be submitted together with the certification against forum
after hearing. The submission of a false certification or shopping. In Zulueta, this Court declared invalid a
non-compliance with any of the undertakings therein petition for review with a certification against forum
shall constitute indirect contempt of court, without shopping signed by the party's counsel which was not
prejudice to the corresponding administrative and supported by a board resolution or secretary's certificate
criminal actions. If the acts of the party or his counsel proving the counsel's authority. This Court dismissed the
clearly constitute willful and deliberate forum shopping, case and held: "[t]he signatory in the Certification of the
the same shall be ground for summary dismissal with Petition before the CA should not have been
prejudice and shall constitute direct contempt, as well as respondents' retained counsel, who would not know
a cause for administrative sanctions. (Emphasis whether there were other similar cases of the
supplied) corporation. Otherwise, this requirement would easily be
In Zulueta v. Asia Brewery, Inc.,[33] this Court ruled that circumvented by the signature of every counsel
the requirements under the Rules of Court involving the representing corporate parties."[40] Likewise, in Eslaban,
certification against forum shopping apply both to natural this Court held that a certification signed by counsel
and juridical persons, to wit: "[t]he requirement that the alone is defective and constitutes a valid cause for the
petitioner should sign the certificate of non-forum dismissal of the petition.[41]
shopping applies even to corporations, considering that
the mandatory directives of the Circular and the Rules of Nestle, itself, acknowledged in this petition the absence
Court make no distinction between natural and juridical of a board resolution or secretary's certificate issued by
persons."[34] the board of directors of Nestle to prove the authority of
Barot to sign the certification against forum shopping on
In Fuentebella v. Castro,[35] this Court held that the behalf of Nestle, to wit: "[t]hus, while there is no board
certification against forum shopping must be signed by resolution and/or secretary's certificate to prove the
the principal party. In case the principal party cannot authority of Dennis Jose R. Barot to file the petition
sign, the one signing on his or her behalf must have and Verification/Certification of Non-Forum
been duly authorized, to wit: "the petitioner or the Shopping on behalf of petitioner-corporation, there is
principal party must execute the certification against a Power of Attorney evidencing such authority."[42] The
forum shopping. The reason for this is that the principal power of attorney submitted by Nestle in favor of Barot
party has actual knowledge whether a petition has was signed by Celine Jorge. However, the authority of
previously been filed involving the same case or Celine Jorge to sign the power of attorney on behalf of
substantially the same issues. If, for any reason, the Nestle, allowing Barot to represent Nestle, was not
principal party cannot sign the petition, the one signing accompanied by a board resolution or secretary's
on his behalf must have been duly authorized." [36] certificate from Nestle showing that Celine Jorge was
authorized by the board of directors of Nestle to execute
Juridical persons, including corporations, that cannot the power of attorney in favor of Barot. In Development
personally sign the certification against forum shopping, Bank of the Philippines v. Court of Appeals,[43] this Court
must act through an authorized representative. The held that the failure to attach a copy of a board resolution
exercise of corporate powers including the power to sue proving the authority of the representative to sign the
is lodged with the board of directors which acts as a certification against forum shopping was fatal to its
petition and was sufficient ground to dismiss since the goods or services which are not similar to those with
courts are not expected to take judicial notice of board respect to which registration is applied for: Provided,
resolutions or secretary's certificates issued by That use of the mark in relation to those goods or
corporations, to wit: services would indicate a connection between those
What petitioners failed to explain, however, is their goods or services, and the owner of the registered mark:
failure to attach a certified true copy of Resolution No. Provided further, That the interests of the owner of the
0912 to their petition for certiorari in CA-G.R. SP No. registered mark are likely to be damaged by such use;
60838. Their omission is fatal to their case. Courts
are not, after all, expected to take judicial notice of (g) Is likely to mislead the public, particularly as to the
corporate board resolutions or a corporate officer's nature, quality, characteristics or geographical origin of
authority to represent a corporation. To be sure, the goods or services;
petitioners' failure to submit proof that Atty. Demecillo
has been authorized by the DBP to file the petition is a (h) Consists exclusively of signs that are generic for
"sufficient ground for the dismissal thereof." [44] (Emphasis the goods or services that they seek to identify;
supplied)
Accordingly, the CA did not err in ruling that the petition x x x x (Emphasis supplied)
for review should be dismissed due to the failure of In Coffee Partners, Inc. v. San Francisco & Roastery,
Nestle to comply with the proper execution of the Inc.,[48] this Court held that the gravamen of trademark
certification against forum shopping required by Section infringement is the likelihood of confusion. There is no
5, Rule 7 of the Rules of Court. absolute standard for the likelihood of confusion. Only
the particular, and sometimes peculiar, circumstances of
Puregold's mark may be registered. each case can determine its existence. Thus, in
infringement cases, precedents must be evaluated in the
A trademark is any distinctive word, name, symbol, light of each particular case.[49]
emblem, sign, or device, or any combination thereof,
adopted and used by a manufacturer or merchant on his In determining similarity or likelihood of confusion, our
goods to identify and distinguish them from those jurisprudence has developed two tests: the dominancy
manufactured, sold, or dealt by others. [45] Section 123 of test and the holistic test.[50] The dominancy test focuses
Republic Act No. 8293[46] (RA 8293) provides for on the similarity of the prevalent features of the
trademarks which cannot be registered, to wit: competing trademarks that might cause confusion and
Sec. 123. Registrability. - deception. If the competing trademark contains the main,
123.1 A mark[47] cannot be registered if it: essential, and dominant features of another, and
x x x x confusion or deception is likely to result, likelihood of
confusion exists. The question is whether the use of the
(d) Is identical with a registered mark belonging to a marks involved is likely to cause confusion or mistake in
different proprietor or a mark with an earlier filing or the mind of the public or to deceive consumers.
[51]
priority date, in respect of:  In McDonald's Corporation v. L.C. Big Mak Burger,
Inc.,[52] this Court gave greater weight to the similarity of
(i) The same goods or services, or the appearance of the product arising from the adoption
of the dominant features of the registered mark, to wit:
(ii) Closely related goods or services, or "[c]ourts will consider more the aural and visual
impressions created by the marks in the public mind,
(iii) If it nearly resembles such a mark as to be likely giving little weight to factors like prices, quality, sales
to deceive or cause confusion; outlets and market segments."[53] The dominancy test is
now incorporated into law in Section 155.1 of RA 8293
(e) Is identical with, or confusingly similar to, or which states:
constitutes a translation of a mark which is considered SECTION 155. Remedies; Infringement. — Any person
by the competent authority of the Philippines to be well- who shall, without the consent of the owner of the
known internationally and in the Philippines, whether or registered mark:
not it is registered here, as being already the mark of a 155.1 Use in commerce any reproduction, counterfeit,
person other than the applicant for registration, and used copy, or colorable imitation of a registered mark or the
for identical or similar goods or services: Provided, That same container or a dominant feature thereof in
in determining whether a mark is well-known, account connection with the sale, offering for sale, distribution,
shall be taken of the knowledge of the relevant sector of advertising of any goods or services including other
the public, rather than of the public at large, including preparatory steps necessary to carry out the sale of any
knowledge in the Philippines which has been obtained goods or services on or in connection with which such
as a result of the promotion of the mark; use is likely to cause confusion, or to cause mistake, or
to deceive; (Emphasis supplied)
(f) Is identical with, or confusingly similar to, or In contrast, the holistic test entails a consideration of the
constitutes a translation of a mark considered well- entirety of the marks as applied to the products,
known in accordance with the preceding paragraph, including the labels and packaging, in determining
which is registered in the Philippines with respect to 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. [54]

The word "COFFEE" is the common dominant feature

between Nestle's mark "COFFEE-MATE" and Puregold's
mark "COFFEE MATCH." However, following Section
123, paragraph (h) of RA 8293 which prohibits exclusive
registration of generic marks, the word "COFFEE"
cannot be exclusively appropriated by either Nestle or
Puregold since it is generic or descriptive of the goods
they seek to identify. In Asia Brewery, Inc. v. Court of
Appeals,[55] this Court held that generic or descriptive
words are not subject to registration and belong to the
public domain. Consequently, we must look at the word
or words paired with the generic or descriptive word, in
this particular case "-MATE" for Nestle's mark and
"MATCH" for Puregold's mark, to determine the
distinctiveness and registrability of Puregold's mark
"COFFEE MATCH."

We agree with the findings of the BLA-IPO and ODG-

IPO. The distinctive features of both marks are sufficient
to warn the purchasing public which are Nestle's
products and which are Puregold's products. While both
"-MATE" and "MATCH" contain the same first three
letters, the last two letters in Puregold's mark, "C" and
"H," rendered a visual and aural character that made it
easily distinguishable from Nestle's mark. Also, the G.R. No. 221717, June 19, 2017
distinctiveness of Puregold's mark with two separate
words with capital letters "C" and "M" made it MANG INASAL PHILIPPINES, INC., Petitioner, v. IFP
distinguishable from Nestle's mark which is one word MANUFACTURING CORPORATION, Respondent.
with a hyphenated small letter "-m" in its mark. In
addition, there is a phonetic difference in pronunciation DECISION
between Nestle's "-MATE" and Puregold's "MATCH." As
a result, the eyes and ears of the consumer would not
VELASCO JR., J.:
mistake Nestle's product for Puregold's product.
Accordingly, this Court sustains the findings of the BLA-
IPO and ODG-IPO that the likelihood of confusion Before us is a Petition for Review on Certiorari under
between Nestle's product and Puregold's product does Rule 45 of the Rules of Court of the Resolutions dated
not exist and upholds the registration of Puregold's mark. June 10, 20151 and December 2, 20152 of the Court of
Appeals (CA) in CA-G.R. SP No. 139020.
WHEREFORE, we DENY the petition. We AFFIRM the
15 May 2014 Resolution and the 14 October 2014 The Facts
Resolution of the Court of Appeals in CA-G.R. SP No.
134592.
The Trademark Application and the Opposition
SO ORDERED.
Respondent IFP Manufacturing Corporation is a local
manufacturer of snacks and beverages.

On May 26, 2011, respondent filed with the Intellectual

Property Office (IPO) an application 3 for the registration
of the mark "OK Hotdog Inasal Cheese Hotdog Flavor
Mark" (OK Hotdog Inasal mark) in connection with
goods under Class 30 of the Nice Classification.4 The
said mark, which respondent intends to use on one of its
curl snack products, appears as follows:

(See Image)
The application of respondent was opposed 5 by BLA issued a Decision11 dismissing petitioner's
petitioner Mang Inasal Philippines, Inc. opposition. The dispositive portion of the Decision reads:

Petitioner is a domestic fast food company and the WHEREFORE, premises considered, the instant
owner of the mark "Mang Inasal, Home of Real Pinoy opposition is hereby DISMISSED. Let the filewrapper
Style Barbeque and Device" Mang Inasal mark) for [sic] of Trademark Application Serial No. 4-2011-006098
services under Class 43 of the Nice Classification.6 The be returned, together with a copy of this Decision, to the
said mark, which was registered with the IPO in Bureau of Trademarks for further information and
20067 and had been used by petitioner for its chain of appropriate action.
restaurants since 2003,8 consists of the following
insignia: SO ORDERED.

(See Image)
Aggrieved, petitioner appealed the Decision of IPO-BLA
to the Director General (DG) of the IPO. 12
Petitioner, in its opposition, contended that the
registration of respondent's OK Hotdog Inasal mark is
On December 15, 2014, the IPO-DG rendered a
prohibited under Section 123.1(d)(iii) of Republic Act No.
Decision13 dismissing the appeal of petitioner. The
(RA) 8293.9 Petitioner averred that the OK Hotdog Inasal
fallo of the Decision accordingly reads:
mark and the Mang Inasal mark share similarities—both
as to their appearance and as to the goods or services
Wherefore, premises considered, the appeal is hereby
that they represent—which tend to suggest a false
dismissed. Let a copy of this Decision be furnished to the
connection or association between the said marks and,
Director ofBureau ofLegal Affairs and the Director of
in that regard, would likely cause confusion on the part of
Bureau of Trademarks for their appropriate action and
the public.10 As petitioner explained:
information. Further, let a copy of this Decision be
furnished to the library ofthe Documentation, Information
1. The OK Hotdog Inasal mark is similar to the and Technology Transfer Bureau for records purposes.
Mang Inasal mark. Both marks feature the same
dominant element—i.e., the word "INASAL"— SO ORDERED.
printed and stylized in the exact same manner,
viz:
Both the IPO-BLA and the IPO-DG were not convinced
a. In both marks, the word "INASAL" is that the OK Hotdog Inasal mark is confusingly similar to
spelled using the same font style and the Mang Inasal mark. They rebuffed petitioner's
red color; contention, thusly:

b. In both marks, the word "INASAL" is 1. The OK Hotdog Inasal mark is not similar to the
placed inside the same black outline and Mang Inasal mark. In terms of appearance, the
yellow background; and only similarity between the two marks is the
word "INASAL." However, there are other words
c. In both marks, the word "INASAL" is like "OK," "HOTDOG," and "CHEESE" and
arranged in the same staggered format. images like that of curls and cheese that are
found in the OK Hotdog Inasal mark but are not
present in the Mang Inasal mark. 14

In addition, petitioner cannot prevent the

2. The goods that the OK Hotdog Inasal mark is application of the word "INASAL" in the OK
intended to identify (i.e., curl snack products) are Hotdog Inasal mark. No person or entity can
also closely related to the services represented claim exclusive right to use the
by the Mang Inasal mark (i.e., fast food word "INASAL" because it is merely a generic or
restaurants). Both marks cover inasal or inasal- descriptive word that means barbeque or
flavored food products. barbeque products.15

2. Neither can the underlying goods and services

of the two marks be considered as closely
Petitioner's opposition was referred to the Bureau of related. The products represented by the two
Legal Affairs (BLA) of the IPO for hearing and marks are not competitive and are sold in
disposition. different channels of trade. The curl snack
products of the OK Hotdog Inasal mark are sold
Decisions of the IPO-BLA and the IPO-DG in sari-sari stores, grocery stores and other small
distributor outlets, whereas the food products
On September 19, 2013, after due proceedings, the IPO- associated with the Mang Inasal mark are sold in
petitioner's restaurants.16
 to be likely to deceive or cause
confusion.
Undeterred, petitioner appealed to the CA.

Resolutions of the CA and the Instant Appeal The concept of confusion, which is at the heart of the
proscription, could either refer to confusion of
goods or confusion of business.  In Skechers U.S.A.,
On June 10, 2015, the CA issued a Resolution 17 denying Inc. v. Trendworks International Corporation, 19 we
the appeal of petitioner. Petitioner filed a motion for discussed and differentiated both types of confusion, as
reconsideration, but this too was denied by the CA follows:
through its Resolution18 dated December 2, 2015. The
CA, in its Resolutions, simply agreed with the Relative to the question on confusion of marks and trade
ratiocinations of the IPO-BLA and IPO-DG. names, jurisprudence has noted two (2) types of
confusion, viz.: (1) confusion of goods (product
Hence, the instant appeal. confusion), where the ordinarily prudent purchaser would
be induced to purchase one product in the belief that he
Here, petitioner prays for the reversal of the CA was purchasing the other; and (2) confusion of business
Resolutions. Petitioner maintains that the OK Hotdog (source or origin confusion), where, although the goods
Inasal mark is confusingly similar to the Mang Inasal of the parties are different, the product, the mark of
mark and insists that the trademark application of which registration is applied for by one party, is such as
respondent ought to be denied for that reason. might reasonably be assumed to originate with the
registrant of an earlier product, and the public would then
Our Ruling be deceived either into that belief or into the belief that
there is some connection between the two parties,
though inexistent.
We have examined the OK Hotdog Inasal and Mang
Inasal marks under the lens of pertinent law and
jurisprudence. And, through it, we have determined the Confusion, in either of its forms, is, thus, only possible
justness of petitioner's claim. By our legal and when the goods or services covered by allegedly similar
jurisprudential standards, the respondent's OK Hotdog marks are identical, similar or re1ated in some manner. 20
Inasal mark is, indeed, likely to cause deception or
confusion on the part of the public. Hence, contrary to Verily, to fall under the ambit of Sec. 123.1(d)(iii) and be
what the IPO-BLA, IPO-DG, and the CA had ruled, the regarded as likely to deceive or cause confusion upon
respondent's application should have been denied. the purchasing public, a prospective mark must be
shown to meet two (2) minimum conditions:
We, therefore, grant the appeal.
1. The prospective mark must nearly resemble or
I be similar to an earlier mark; and

The Proscription: Sec. 123.1 (d)(iii) of RA 8293 2. The prospective mark must pertain to goods or
services that are either identical, similar or
related to the goods or services represented by
A mark that is similar to a registered mark or a mark with the earlier mark.
an earlier filing or priority date (earlier mark) and which is
likely to cause confusion on the part of the public cannot
be registered with the IPO. Such is the import of Sec.
123.1(d)(iii) of RA 8293: The rulings of the IPO-BLA, IPO-DG, and the CA all rest
on the notion that the OK Hotdog Inasal mark
SECTION 123. Registrability. - does not fulfill both conditions and so may be granted
registration.
123. 1. A mark cannot be registered if it:
We disagree.
x x x x
II
d. x x x:
The OK Hotdog Inasal Mark Is Similar to the Mang
i. xxx Inasal Mark
ii. xxx
iii. ...nearly resembles [a registered
mark belonging to a different The first condition of the proscription requires
proprietor or a mark with an resemblance or similarity between a prospective mark
earlier filing or priority date] as and an earlier mark Similarity does not mean absolute
identity of marks.21 To be regarded as similar to an 2. Being the sole dominant element, the
earlier mark, it is enough that a prospective mark be a word "INASAL," as stylized in the Mang
colorable imitation of the former.22 Colorable imitation Inasal mark, is also the most distinctive and
denotes such likeness in form, content, words, sound, recognizable feature of the said mark.
meaning, special arrangement or general appearance of
one mark with respect to another as would likely mislead 3. The dominant element "INASAL," as
an average buyer in the ordinary course of purchase. 23 stylized in the Mang Inasal mark, is different
from the term "inasaf' per se. The
In determining whether there is similarity or colorable term "inasal" per se  is a descriptive term that
imitation between two marks, authorities employ either cannot be appropriated. However, the
the dominancy test  or the holistic test.24 In Mighty dominant element "INASAL," as stylized in
Corporation v. E. & J. Gallo Winery, 25 we distinguished the Mang Inasal mark, is not. Petitioner, as
between the two tests as follows: the registered owner of the Mang Inasal
mark, can claim exclusive use of such
The Dominancy Test focuses on the similarity of the element.
prevalent features of the competing trademarks which
might cause confusion or deception, and thus 4. The respondent's OK Hotdog Inasal mark, on
infringement. If the competing trademark contains the the other hand, has three (3) dominant features:
main, essential or dominant features of another, and (a) the word "INASAL" written in a bold red
confusion or deception is likely to result, typeface against a black and yellow outline with
infringement takes place. Duplication or imitation is not staggered design; (b) the
necessary; nor is it necessary that the infringing label word "HOTDOG"  written in green colored font;
should suggest an effort to imitate. The question is and (c) a picture of three pieces of curls. Though
whether the use of the marks involved is likely to cause there are other observable elements in the mark
confusion or mistake in the mind of the public or deceive —such as the word "OK" written in red colored
purchasers. font at the upper left side of the mark, the small
red banner overlaying the picture of the curls
On the other hand, the Holistic Test requires that the with the words "CHEESE HOTDOG
entirety of the marks in question be considered in FLAVOR" written on it, and the image of a block
resolving confusing similarity. Comparison of words is of cheese beside the picture of the curls—none
not the only determining factor. The trademarks in their of those are as prevalent as the two features
entirety as they appear in their respective labels or hang aforementioned.
tags must also be considered in relation to the goods to
which they are attached. The discerning eye of the 5. The dominant element "INASAL" in the OK
observer must focus not only on the predominant words Hotdog Inasal mark is exactly the same as
but also on the other features appearing in both labels in the dominant element "NASAL" in the Mang
order that he may draw his conclusion whether one is Inasal mark. Both elements in both marks are
confusingly similar to the other. (citations omitted and printed using the exact same red colored
emphasis supplied) font, against the exact same black outline
and yellow background and is arranged in
There are currently no fixed rules as to which of the two the exact same staggered format.
tests can be applied in any given case.26 However,
recent case law on trademark seems to indicate an 6. Apart from the element "INASAL," there appear
overwhelming judicial preference towards applying the no other perceivable similarities between the two
dominancy test.27 We conform. marks.

Our examination of the marks in controversy yielded the

following findings:
Given the foregoing premises, and applying the
1. The petitioner's Mang Inasal mark has a single dominancy test, we hold that the OK Hotdog Inasal mark
dominant feature—the word "INASAL"  written in is a colorable imitation of the Mang Inasal mark.
a bold red typeface against a black outline and
yellow background with staggered design. The First. The fact that the conflicting marks have exactly the
other perceptible elements of the mark—such as same dominant element is key. It is undisputed that the
the word "MANG"  written in black colored font at OK Hotdog Inasal mark copied and adopted as one of its
the upper left side of the mark and the dominant features the "INASAL" element of the Mang
phrase "HOME OF REAL PINOY STYLE Inasal mark. Given that the "INASAL" element is, at the
BARBEQUE"  written in a black colored stylized same time, the dominant and most distinctive feature of
font at the lower portion of the mark—are not as the Mang Inasal mark, the said element's incorporation
visually outstanding as the mentioned feature. in the OK Hotdog Inasal mark, thus, has the potential to
project the deceptive and false impression that the latter
mark is somehow linked or associated with the former
mark. 5. the descriptive properties, physical attributes or
essential characteristics with reference to their
Second. The differences between the two marks are form, composition, texture or quality;
trumped by the
6. the purpose of the goods;
overall impression created by their similarity. The mere
fact that there are other elements in the OK Hotdog 7. whether the article is bought for immediate
Inasal mark that are not present in the Mang Inasal mark consumption, that is, day-to-day household
actually does little to change the probable public items;
perception that both marks are linked or associated. It is
worth reiterating that the OK Hotdog Inasal mark actually 8. the fields of manufacture;
brandishes a literal copy of the most recognizable
feature of the Mang Inasal mark. We doubt that an 9. the conditions under which the article is usually
average buyer catching a casual glimpse of the OK purchased, and
Hotdog Inasal mark would pay more attention to the
peripheral details of the said mark than it would to the 10. the channels of trade through which the goods
mark's more prominent feature, especially when the flow, how they are distributed, marketed,
same invokes the distinctive feature of another more displayed and sold.
popular brand.

All in all, we find that the OK Hotdog Inasal mark is

similar to the Mang Inasal mark. Relative to the consideration of the foregoing factors,
however, Mighty Corporation30 significantly imparted:
III
The wisdom of this approach is its recognition that each
The Goods for which the Registration of the trademark infringement case presents its own unique set
OK Hotdog Inasal Mark Is Sought Are Related to the of facts. No single factor is preeminent, nor can the
Services Being Represented by the Mang Inasal presence or absence of one determine, without analysis
Mark of the others, the outcome of an infringement suit.
Rather, the court is required to sift the evidence relevant
to each of the criteria. This requires that the entire
The second condition of the proscription requires that the panoply of elements constituting the relevant factual
prospective mark pertain to goods or services that are landscape be comprehensively examined. It is a
either identical, similar or related to the goods or weighing and balancing process. With reference to this
services represented by the earlier mark. While there ultimate question, and from a balancing of the
can be no quibble that the curl snack product for which determinations reached on all of the factors, a
the registration of the OK Hotdog Inasal mark is sought conclusion is reached whether the parties have a right to
cannot be considered as identical or similar to the the relief sought.
restaurant services represented by the Mang Inasal
mark, there is ample reason to conclude that the said A very important circumstance though is whether
product and services may nonetheless be regarded there exists a likelihood that an appreciable number
as related to each other. of ordinarily prudent purchasers will be misled, or
simply confused, as to the source of the goods in
Related goods and services are those that, though non- question. The "purchaser" is not the "completely unwary
identical or non-similar, are so logically connected to consumer" but is the "ordinarily intelligent buyer"
each other that they may reasonably be assumed to considering the type of product involved he is
originate from one manufacturer or from economically- accustomed to buy, and therefore to some extent familiar
linked manufacturers.28 In determining whether goods or with, the goods in question. The test of fraudulent
services are related, several factors may be considered. simulation is to be found in the likelihood of the
Some of those factors recognized in our jurisprudence deception of some persons in some measure acquainted
are:29 with an established design and desirous of purchasing
the commodity with which that design has been
1. the business (and its location) to which the associated. The test is not found in the deception, or the
goods belong; possibility of deception, of the person who knows nothing
about the design which has been counterfeited, and who
2. the class of product to which the goods belong; must be indifferent between that and the other. The
simulation, in order to be objectionable, must be
3. the product's quality, quantity, or size, including such as appears likely to mislead the ordinary
the nature of the package, wrapper or container; intelligent buyer who has a need to supply and is
familiar with the article that he seeks to
4. the nature and cost of the articles; purchase. (citations omitted and emphasis supplied)
 earlier mark Second, it pertains to goods that are related
Mindful of the foregoing precepts, we hold that the curl to the services represented by such earlier mark
snack product for which the registration of the OK Petitioner was, therefore, correct; and the IPO-BLA, IPO-
Hotdog Inasal mark is sought is related to the restaurant DG, and the CA's rulings must be reversed. The OK
services represented by the Mang Inasal mark, in such a Hotdog Inasal mark is not entitled to be registered as its
way that may lead to a confusion of business. In holding use will likely deceive or cause confusion on the part of
so, we took into account the specific kind of restaurant the public and, thus, also likely to infringe the Mang
business that petitioner is engaged in, the reputation of Inasal mark The law, in instances such as this, must
the petitioner's mark, and the particular type of curls come to the succor of the owner of the earlier mark.
sought to be marketed by the respondent, thus:
WHEREFORE, premises considered, the petition is
First. Petitioner uses the Mang Inasal mark in connection hereby GRANTED. We hereby render a decision as
with its restaurant services that is particularly known for follows:
its chicken inasal, i.e., grilled chicken doused in a
special inasal marinade.31 The inasal  marinade is 1. REVERSING and SETTING ASIDE the
different from the typical barbeque marinade and it is Resolutions dated June 10, 2015 and December
what gives the chicken inasal its unique taste and 2, 2015 of the Court of Appeals in CA-G.R. SP
distinct orange color.32Inasal refers to the manner of No. 139020;
grilling meat products using an inasal marinade.
2. SETTING ASIDE the Decision dated December
Second. The Mang Inasal mark has been used for 15, 2014 of the Director General of the
petitioner's restaurant business since 2003. The Intellectual Property Office in Appeal No. 14-
restaurant started in Iloilo but has since expanded its 2013-0052;
business throughout the country. Currently, the Mang
Inasal chain of restaurants has a total of 464 branches 3. SETTING ASIDE the Decision dated September
scattered throughout the nation's three major islands. 33 It 19, 2013 of the Director of the Bureau of Legal
is, thus, fair to say that a sizeable portion of the Affairs of the Intellectual Property Office in IPC
population is knowledgeable of the Mang Inasal mark. No. 14-2012-00369; and
Third. Respondent, on the other hand, seeks to market 4. DIRECTING the incumbent Director General and
under the OK Hotdog Inasal mark curl snack products Director of the Bureau of Legal Affairs of the
which it publicizes as having a cheese Intellectual Property Office
hotdog inasal  flavor.34 to DENY respondent's Application No. 4-2011-
006098 for the registration of the mark "OK
Accordingly, it is the fact that the underlying goods and Hotdog Inasal Cheese Hotdog Flavor Mark."
services of both marks deal with inasal and inasal-
flavored products which ultimately fixes the relations
between such goods and services. Given the foregoing
SO ORDERED.
circumstances and the aforesaid similarity between the
marks in controversy, we are convinced that an average
buyer who comes across the curls marketed under the
G.R. No. 217916, June 20, 2018 ]
OK Hotdog Inasal mark is likely to be confused as to the
true source of such curls. To our mind, it is not unlikely
ABS-CBN PUBLISHING, INC., PETITIONER, VS.
that such buyer would be led into the assumption that
DIRECTOR OF THE BUREAU OF TRADEMARKS,
the curls are of petitioner and that the latter has ventured
RESPONDENT.
into snack manufacturing or, if not, that the petitioner has
supplied the flavorings for respondent's product. Either
DECISION
way, the reputation of petitioner would be taken
REYES, JR., J:
advantage of and placed at the mercy of respondent.
The Case
All in all, we find that the goods for which the registration
of the OK Hotdog Inasal mark is sought are related to Challenged before the Court via this Petition for Review
the services being represented by the Mang Inasal mark.
on Certiorari under Rule 45 of the Rules of Court is the
Resolution[1] of the Court of Appeals promulgated on
IV
May 20, 2014, which denied ABS-CBN Publishing, Inc.'s
Conclusion (petitioner) "Motion for Extension of Time [To File
Petition for Review]." Likewise challenged is the
subsequent Resolution[2] of the Court of Appeals
The OK Hotdog Inasal mark meets the two conditions of promulgated on April 15, 2015, which upheld the earlier
the proscription under Sec. 123.1(d)(iii) ofRA Resolution.
8293. First, it is similar to the Mang Inasal mark, an
The Antecedent Facts Bureau Director's decision.

In 2004,[3] the petitioner filed with the Intellectual According to the ODG; there is no merit in the
Property Office of the Philippines (IPO) its application for petitioner's appeal because (1) the applicant and cited
the registration of its trademark "METRO" (applicant marks are identical and confusingly similar,[13] (2) the
mark) under class 16 of the Nice classification, with petitioner's mark was deemed abandoned under the old
specific reference to "magazines."[4] The case was Trademark Law, and thus, petitioner's prior use of the
assigned to Examiner Arlene M. Icban (Examiner Icban), same did not create a vested right[14] under the IPC,
[15]
who, after a judicious examination of the application,  and (3) the applicant mark has not acquired
refused the applicant mark's registration. secondary meaning.[16] The fallo of the ODG decision
reads:
According to Examiner Icban, the applicant mark is
identical with three other cited marks, and is therefore Wherefore, premises considered, the appeal is
unregistrable according to Section 123.1(d) of the hereby DENIED and the Decision dated 29 March 2010
Intellectual Property Code of the Philippines (IPC). [5] The and the Order denying the Appellant's Motion for
cited marks were identified as (1) "Metro" (word) by Reconsideration, of the Director of the Bureau of
applicant Metro International S.A. with Application No. Trademarks, are hereby SUSTAINED. The Appellant's
42000002584,[6] (2) "Metro" (logo) also by applicant Trademark Application No. 4-2004-004507 for METRO is
Metro International S.A. with Application No. likewise DENIED.
42000002585,[7] and (3) "Inquirer Metro" by applicant
Philippine Daily Inquirer, Inc. with Application No. Let a copy of this Decision as well as the trademark
42000003811.[8] application and records be furnished and returned to the
Director of the Bureau of Trademarks. Let a copy of this
On August 16, 2005, the petitioner wrote a letter [9] in Decision be furnished also the library of the
response to Examiner Icban's assessment, and the Documentation, Information and Technology Transfer
latter, through Official Action Paper No. 04, subsequently Bureau for its information and records purposes.
reiterated her earlier finding which denied the registration
of the applicant mark. Eventually, in the "Final SO ORDERED.[17]
Rejection"[10] of the petitioner's application, Examiner The petitioner received a copy of the ODG decision only
Icban "determined that the mark subject of the on October 9, 2013. On the same day, the petitioner filed
application cannot be registered because it is identical before the Court of Appeals its "Motion for Extension of
with the cited marks METRO with Regn. No. Time (To File Petition for Review)" which requested for
42000002584 ['Metro' (word)] and Regn. No. an extension of fifteen (15) days from October 24, 2013,
42000003811 ['Inquirer Metro']."[11] or until November 8, 2013, to file its petition for review.
[18]
 On October 25, 2013, the petitioner once more filed a
The petitioner appealed the assessment of Examiner motion for extension of time. In the second motion, the
Icban before the Director of the Bureau of Trademarks of petitioner asked the appellate court for another extension
the IPO, who eventually affirmed Examiner Icban's of the deadline from November 8, 2013 to November 23,
findings. The decision averred that the applicant and 2013.[19]
cited marks were indeed confusingly similar, so much so
that there may not only be a confusion as to the goods Meanwhile, on October 25, 2013, the Court of Appeals
but also a confusion as to the source or origin of the issued a Resolution which granted the petitioner's first
goods. The fallo of the Bureau Director's decision reads: motion praying for an extension of time to file its petition
WHEREFORE, premises considered, the instant appeal for review, subject to the "warning against further
is hereby DENIED and the Final Rejection contained in extension." Thus, the Court of Appeals extended the
Official Action Paper No. 04, SUSTAINED. Serve copies deadline only until November 8, 2013. [20]
of this Decision to [petitioner] and herein Examiner
Arlene M. Icban. Relying on the appellate court's favorable response to its
second motion for extension (which was not acted upon
SO ORDERED.[12] by the Court of Appeals), the petitioner failed to file its
petition for review on the deadline set in the Resolution
Upon the denial of the petitioner's motion for dated October 25, 2013. Instead, the petitioner filed its
reconsideration, the petitioner appealed to the Office of petition for review only on November 11, 2013-three (3)
the Director General (ODG) of the IPO. After the days after the deadline.[21]
submission of the memoranda from the parties, the
ODG, on September 19, 2013, rendered a Decision To justify this delay in filing, the petitioner stated that: (1)
which upheld Examiner Icban's assessment and the it received a copy of the October 25, 2013 Resolution
only on November 8, 2013 at 11:30 in the morning; (2)
on that same day, this Court, through its Public In connection herewith, Section 4, Rule 43 of the Rules
Information Office, suspended offices in the National of Court is clear. The appeal shall be taken within fifteen
Capital Judicial Region in view of Typhoon Yolanda; and (15) days from the notice of the award, judgment, final
(3) November 9 and 10, 2013 fell on a Saturday and order or resolution, or from the date of its last
Sunday, respectively.[22] publication, if publication is required by law for its
effectivity, or of the denial of petitioner's motion for new
On May 20, 2014, the Court of Appeals rendered the trial or reconsideration duly filed in accordance with the
assailed Resolution. It ruled that the petitioner violated governing law of the court or agency a quo.[29]
its October 25, 2013 Resolution, as well as Section 4,
Rule 43 of the Rules of Court, which provides for the More, a litigant is allowed to file only one (1) motion for
period of appeal.[23] reconsideration, subject to the payment of the full
amount of the docket fee prior to the expiration of the
On the basis of the foregoing, and the prevailing reglementary period. Beyond this, another motion for
jurisprudence, the Court of Appeals consequently denied extension of time may be granted but only for the most
the petitioner's second motion for extension of time, and compelling reasons.[30]
dismissed the petition for the petitioner's failure to file its
petition for review within the deadline.[24] Again, in Bañez, the Court ruled that filing of an appeal
beyond the reglementary period may, under meritorious
On April 15, 2015, the appellate court denied the cases, be excused if the barring of the appeal would be
petitioner's motion for reconsideration.[25] inequitable and unjust in light of certain circumstances
therein.[31] While there are instances when the Court has
Hence, this petition. relaxed the governing periods of appeal in order to serve
substantial justice, this was done only in exceptional
The Issues cases.[32]

The ground upon which the petitioner prays for the In this case, no exceptional circumstance exists.
reversal of the ruling of the Court of Appeals is two-fold:
first is on procedural law-whether or not the Court of In asking the Court of Appeals for a second extension to
Appeals erred in dismissing the petition outright for the file its petition for review, the petitioner merely cited as
petitioner's failure to file its petition for review within the its excuse the following: (1) heavy pressure of other
time prescribed by the Court of Appeals; and second is professional work; and (2) attendance of the lawyers in
on substantive law-whether or not the ODG was correct charge in an international lawyers' conference. It said:
in refusing to register the applicant mark for being
identical and confusingly similar with the cited marks However, due to the heavy pressure of other equally
already registered with the IPO. important professional work coupled with intervening
delays and the fact of the necessary attendance of the
The Court's Ruling lawyers in charge of the case in an international lawyer's
(sic) conference, the undersigned counsel will need
After a careful perusal of the arguments presented and more time to review and finalize petitioner ABS-CBN
the evidence submitted, the Court finds no merit in the Publishing, Inc.'s Petition for Review.[33]
petition. As the Court has ruled upon in a number of cases, a
lawyer has the responsibility of monitoring and keeping
First, on the procedural issue: track of the period of time left to file pleadings, and to
see to it that said pleadings are filed before the lapse of
In Bañez vs. Social Security System,[26] the Court had the period.[34] Personal obligations and heavy workload
occasion to reiterate that appeal is not a constitutional do not excuse a lawyer from complying with his
right, but a mere statutory privilege. Hence, parties who obligations particularly in timely filing the pleadings
seek to avail themselves of it must comply with the required by the Court.[35] Indeed, if the failure of the
statutes or rules allowing it. [27] The rule is that failure to petitioner's counsel to cope with his heavy workload
file or perfect an appeal within the reglementary period should be considered a valid justification to sidestep the
will make the judgment final and executory by operation reglementary period, there would be no end to litigations
of law. Perfection of an appeal within the statutory or so long as counsel had not been sufficiently diligent or
reglementary period is not only mandatory but also experienced.[36]
jurisdictional; failure to do so renders the questioned
decision/resolution final and executory, and deprives the Further, the petitioner should not assume that its motion
appellate court of jurisdiction to alter the for extension of time would be granted by the appellate
decision/resolution, much less to entertain the appeal. [28]
court. Otherwise, the Court will be setting a dangerous
precedent where all litigants will assume a favorable According to Section 123.1(d) of the Intellectual Property
outcome of a motion which is addressed to the discretion Code of the Philippines (IPC),[41] a mark cannot be
of the courts based on the prevailing circumstances of registered if it is "identical with a registered mark
the case. belonging to a different proprietor or a mark with an
earlier filing or priority date," in respect of the following:
To be sure, there is a dearth of jurisprudence that (i) the same goods or services, or (ii) closely related
upholds the Court of Appeals' power of discretion in goods or services, or (iii) if it nearly resembles such a
disallowing a second extension of fifteen (15) days. As mark as to be likely to deceive or cause confusion. [42]
correctly cited by the appellate court, Spouses Dycoco
vs. Court of Appeals[37] explains that the Court of To determine whether a mark is to be considered as
Appeals could not be faulted for merely applying the "identical" or that which is confusingly similar with that of
rules, and that a dismissal of a petition in accordance another, the Court has developed two (2) tests: the
therewith is discretion duly exercised, and not misused dominancy and holistic tests. While the Court has time
or abused.[38] and again ruled that the application of the tests is on a
case to case basis, upon the passage of the IPC, the
Based on the foregoing, and for the guidance of both the trend has been to veer away from the usage of the
bench and the bar, the rule as it currently stands is that, holistic test and to focus more on the usage of the
in the absence of, or in the event of a party's failure to dominancy test. As stated by the Court in the case
receive, any resolution from the courts which specifically of McDonald's Corporation vs. L.C. Big Mak Burger, Inc.,
[43]
grants a motion for extension of time to file the  the "test of dominancy is now explicitly incorporated
necessary pleading, the parties are required to abide by into law in Section 155.1 of the Intellectual Property
the reglementary period provided for in the Rules of Code which defines infringement as the 'colorable
Court. Failure to comply thereto would result to a imitation of a registered mark x x x or a dominant feature
dismissal or denial of the pleadings for being filed thereof.'"[44] This is rightly so because Sec. 155.1
beyond the reglementary period. provides that:

In the case at hand, the Court of Appeals was correct in SECTION 155. Remedies; Infringement. - Any person
dismissing the petition. The petitioner could not assume who shall, without the consent of the owner of the
that its motion would be granted, especially in light of its registered mark:
flimsy excuse for asking the second extension of time to
file its petition for review. 155.1. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or the
On this ground alone, the dismissal of the current same container or a dominant feature thereof in
petition for review is justifiable. The Court reiterates its connection with the sale, offering for sale, distribution,
warning in the case of Hernandez vs. Agoncillo:[39] advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any
Time and again, this Court has cautioned lawyers to goods or services on or in connection with which such
handle only as many cases as they can efficiently use is likely to cause confusion, or to cause mistake, or
handle. The zeal and fidelity demanded of a lawyer to his to deceive; or x x x. (Emphasis and underscoring
client's cause require that not only should he be qualified supplied)
to handle a legal matter, he must also prepare
adequately and give appropriate attention to his legal In using this test, focus is to be given to the dominant
work. Since a client is, as a rule, bound by the acts of his features of the marks in question. In the 1954 case of Co
counsel, a lawyer, once he agrees to take a case, should Tiong Sa vs. Director of Patents,[45] the Court, in using
undertake the task with dedication and care. This Court the dominancy test, taught that:
frowns upon a lawyer's practice of repeatedly seeking But differences of variations in the details of one
extensions of time to file pleadings and thereafter simply trademark and of another are not the legal!y accepted
letting the period lapse without submitting any pleading tests of similarity in trademarks. It has been consistently
or even any explanation or manifestation for his held that the question of infringement of a trademark is
omission. Failure of a lawyer to seasonably file a to be determined by the test of dominancy. Similarity in
pleading constitutes inexcusable negligence on his size, form, and color, while relevant, is not
part.[40] (Emphasis and underscoring supplied) conclusive. If the competing trademark contains the
That said, however, even on the merits, the petition still main or essential or dominant features of another,
fails to convince. and confusion and deception is likely to result,
infringement takes place.[46] (Emphasis and
Second, on the substantive issue: underscoring supplied)
The Court, in Skechers, U.S.A., Inc. vs. Inter Pacific remarkable similarity in sound, spelling, meaning,
Industrial Trading Corp.,[47] and in once again using the connotation, overall commercial impression, covers
dominancy test, reiterated Del Monte Corporation vs. identical goods and flows through the same channel of
Court of Appeals[48] in saying that "the defendants in trade. The concurrent use by the parties of the word
cases of infringement do not normally copy but only METRO is likely to cause confusion among
make colorable changes."[49] The Court emphasized that purchasers as well as confusion of business or
"the most successful form of copying is to employ origin hence, registration of this subject application
enough points of similarity to confuse the public, with is proscribed under R.A. 8293, Sec. 123.1(d).
enough points of difference to confuse the courts." [50] [53]
 (Emphasis and underscoring supplied)

In other words, in committing the infringing act, the The findings of Examiner Icban, reviewed first by the
infringer merely introduces negligible changes in an Director of the Bureau of Trademarks, and again by the
already registered mark, and then banks on these slight Director General of the IPO, are the result of a judicious
differences to state that there was no identity or study of the case by no less than the government
confusing similarity, which would result in no agency duly empowered to examine applications for the
infringement. This kind of act, which leads to confusion registration of marks.[54] These findings deserve great
in the eyes of the public, is exactly the evil that the respect from the Court. Absent any strong justification for
dominancy test refuses to accept. The small deviations the reversal thereof-as in this case-the Court shall not
from a registered mark are insufficient to remove the reverse and set aside the same. As such, the prior
applicant mark from the ambit of infringement. findings remain: the applicant mark, "METRO," is
identical to and confusingly similar with the other cited
In the present case, the dominant feature of the marks already registered. By authority of the Sec.
applicant mark is the word "METRO" which is 123.l(d) of the IPC, the applicant mark cannot be
identical, both visually and aurally, to the cited marks registered. The ODG is correct in upholding the Decision
already registered with the IPO. As held by the ODG-and of both the Director of the Bureau of Trademarks and
correctly at that - Examiner Icban.

x x x there is no dispute that the subject and cited This ruling stands despite the specious arguments
marks share the same dominant word, "Metro". (sic) presented by the petitioner in the current petition.
Even if, as the Appellant (petitioner herein) points out,
the second cited mark owned by Metro International The petitioner asserts that it has a vested right over the
contains an accompanying device, and the third cited applicant mark because Metro Media Publishers, Inc.
mark contains the terms "Philippine Daily Inquirer", (Metro Media), the corporation from which the petitioner
(sic) the dominant feature of the subject and cited acquired the applicant mark, first applied for the
marks is still clearly the word "Metro", (sic) spelled registration of the same under the old Trademark Law,
[55]
and pronounced in exactly the same way. The identity  and since then, actually used the applicant mark in
between the marks would indubitably result in confusion commerce. The petitioner belabors the point that under
of origin as well as goods. [51] (Emphasis and the old Trademark law, actual use in commerce is a pre-
underscoring supplied, citations omitted) requisite to the acquisition of ownership over a
trademark and a trade name.[56] The petitioner even went
Also, greater relevance is to be accorded to the finding on further in asserting that its actual use of the applicant
of Examiner Icban on the confusing similarity between, if mark enabled it to automatically acquire trademark
not the total identity of, the applicant and cited marks. rights, which should have extended even upon the
Examiner Icban, in reiterating with finality her earlier promulgation of the IPC in 1998.
findings, said that the applicant and cited marks are "the
same in sound, spelling, meaning, overall commercial Two things must be said of this argument.
impression, covers substantially the same goods and
flows through the same channel of trade," which leads to First, there is no question that the petitioner's
no other conclusion than that "confusion as to the source predecessor already applied for the registration of the
of origin is likely to occur." [52] This is also the tenor of applicant mark "METRO" on November 3, 1994 under
Examiner Icban's "Final Rejection" of the application, Class 16 of the Nice classification. It was docketed as
which stated that: Application No. 4-1994-096162.[57] There is likewise no
After an examination of the application, the undersigned question that as early as 1989, Metro Media has already
IPRS has determined that the mark subject of the used the applicant mark "METRO" in its magazine
application cannot be registered because it is identical publication. At that point, Metro Media exercised all the
with the cited marks METRO with Regn. No. rights conferred by law to a trademark applicant.
42000002584 and Regn. No. 42000003811. METRO
being dominant word (sic) among the marks causes Second, however, the petitioner itself admitted in its
petition that its application/registration with the IPO identical mark is used for identical goods. The provision
under Application No. 4-1994-096162 was already states:
"deemed abandoned."[58]
SEC. 3. Presumption of likelihood of confusion. -
While it is quite noticeable that the petitioner failed to Likelihood of confusion shall be presumed in case an
discuss the implications of this abandonment, it remains identical sign or mark is used for identical goods or
a fact that once a trademark is considered abandoned, services.
the protection accorded by the IPC, or in this case the In the present case, the applicant mark is classified
old Trademark Law, is also withdrawn. The petitioner, in under "magazines," which is found in class 16 of the
allowing this abandonment, cannot now come before the Nice classification. A perusal of the records would
Court to cry foul if another entity has, in the time that it reveal, however, that the cited marks "METRO" (word)
has abandoned its trademark and in full cognizance of and "METRO" (logo) are also both classified under
the IPC and the IPO rules, registered its own. magazines. In fact, Examiner Icban found that the cited
marks were used on the following classification of goods:
In fact, in Birkenstock Orthopaedie GMBH and Co. KG.
vs. Philippine Shoe Expo Marketing Corporation, [59] the Paper, cardboard and goods made from these materials,
Court accorded no right at all to a trademark owner not included in other classes; newspapers, magazines,
whose trademark was abandoned for failure to file the printed matter and other printed publications;
declaration of actual use as required by Sec. 12 of the bookbinding material; photographs; stationery;
old Trademark Law.[60] In Mattel, Inc. vs. Francisco,[61] the adhesives for stationery or household purposes; artists
Court rendered a petition as moot and academic materials; paint brushes; typewriters and office requisites
because the cited mark has effectively been abandoned (except furniture); instructional and teaching material
for the non-filing of a declaration of actual use, and thus (except apparatus); plastics materials for packaging (not
presents no hindrance to the registration of the applicant included in other classes); playing cards; printers types;
mark. printing blocks.[67] (Emphasis and underscoring supplied)

Thus, the presumption arises.

Also, as correctly pointed out by the ODG, this
abandonment is the very reason why the petitioner lost
Even then, it must be emphasized that absolute certainty
its rights over its trademark, and that it is also the reason
of confusion or even actual confusion is not required to
why, after twenty years (20) from the initial application
refuse registration. Indeed, it is the mere likelihood of
and after actual use of the applicant mark, the petitioner
confusion that provides the impetus to accord protection
once again came before the IPO to apply for registration.
to trademarks already registered with the IPO. The Court
The ODG said:
cannot emphasize enough that the cited marks
Records show that this is the very situation the "METRO" (word) and "METRO" (logo) are identical with
[petitioner] finds itself in. It has acquired no right under the registrant mark "METRO" both in spelling and in
the old trademark law since its original application sound. In fact, it is the same exact word. Considering
way back 1994 has been deemed abandoned, which that both marks are used in goods which are classified
is the reason why it filed the current application in as magazines, it requires no stretch of imagination that a
2004 under the new law. Clearly, then, if [petitioner] has likelihood of confusion may occur. Again, the Court
acquired no right under R.A. 166, it possesses no points to the finding of Examiner Icban which was
existing right that ought to be preserved by virtue of reviewed and upheld twice: one by the Director of the
Section 236 of the IP Code. [62] (Emphasis and Bureau of Trademarks and another by the Director
underscoring supplied) General of the IPO.

Anent the petitioner's argument that "confusion between As a final point, the petitioner, in the pleadings
the marks is highly unlikely," [63] the petitioner asserts that submitted, manifested that the cited marks are no longer
the applicant mark "METRO" (word) is covered by class valid. It said that: (1) the cited mark "METRO" (logo) was
16 of the Nice classification under "magazines," the removed from the IPO register for non-use, citing the
copies of which are sold in "numerous retail outlets in the IPO online database,[68] (2) the cited mark "INQUIRER
Philippines,"[64] whereas the cited mark "METRO" (word) METRO," while valid according to the IPO online
is used in the Philippines only in the internet through its database, was cancelled according to a certain
website and does not have any printed circulation.[65] certification from the Bureau of Trademarks of the IPO;
and (3) the cited mark "METRO" (word) already expired
But like the petitioner's earlier argument, this does not on June 26, 2016 according to yet another certification
hold water. Section 3, Rule 18 of the Rules of Procedure from the IPO.
for Intellectual Property Cases[66] provides for the legal
presumption that there is likelihood of confusion if an A perusal of the records, however, would reveal that
these alleged de-registration and cancellation all
allegedly occurred after the ODG has already ruled on
the instant case. Considering that the Court is not a trier
of facts, the Court could therefore not make a
determination of the validity and accuracy of the
statements made in the petitioner's manifestation. As
such, the Court, through the limited facts extant in the
records, could not give weight and credence thereto.

Nonetheless, not all is lost for the petitioner. Should it be

true that the cited marks, which were the basis of the
IPO in refusing to register the applicant mark, were
already de-registered and cancelled, nothing prevents
the petitioner from once again applying for the
registration of the applicant mark before the IPO.

WHEREFORE, premises considered, the Resolutions of

the Court of Appeals dated May 20, 2014 and April 15,
2015, are hereby AFFIRMED without prejudice to the
petitioner's refiling of its application for the registration of
the trademark "METRO" before the Intellectual Property
Office.

SO ORDERED.

G.R. No. 138900 September 20, 2005

LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.),

INC., Petitioners,
vs.
CLINTON APPARELLE, INC., Respondent.
DECISION However, since LS & Co. and LSPI are unsure if both, or
just one of impleaded defendants are behind the
Tinga, J.: manufacture and sale of the "Paddocks" jeans
complained of, they brought this suit under Section 13,
Rule 311 of the 1997 Rules of Civil Procedure.12
Before us is a petition for review on certiorari 1 under
Rule 45 of the 1997 Rules of Civil Procedure filed by
Levi Strauss & Co. (LS & Co.) and Levi Strauss The Complaint contained a prayer that reads as follows:
(Philippines), Inc. (LSPI) assailing the Court of
Appeals’ Decision2 and Resolution3  respectively dated 1. That upon the filing of this complaint, a temporary
21 December 1998 and 10 May 1999. The restraining order be immediately issued restraining
questioned Decision granted respondent’s prayer for a defendants, their officers, employees, agents,
writ of preliminary injunction in its Petition4 and set aside representatives, dealers, retailers or assigns from
the trial court’s orders dated 15 May 1998 5 and 4 June committing the acts herein complained of, and,
19986 which respectively granted petitioners’ prayer for specifically, for the defendants, their officers, employees,
the issuance of a temporary restraining order (TRO) and agents, representatives, dealers and retailers or assigns,
application for the issuance of a writ of preliminary to cease and desist from manufacturing, distributing,
injunction. selling, offering for sale, advertising, or otherwise using
denims, jeans or pants with the design herein
This case stemmed from the Complaint7 for Trademark complained of as substantially, if not exactly similar, to
Infringement, Injunction and Damages filed by petitioners plaintiffs’ "Dockers and Design" trademark.
LS & Co. and LSPI against respondent Clinton
Apparelle, Inc.* (Clinton Aparelle) together with an 2. That after notice and hearing, and pending trial on the
alternative defendant, Olympian Garments, Inc. merits, a writ of preliminary injunction be issued
(Olympian Garments), before the Regional Trial Court of enjoining defendants, their officers, employees, agents,
Quezon City, Branch 90.8 The Complaint was docketed dealers, retailers, or assigns from manufacturing,
as Civil Case No. Q-98-34252, entitled "Levi Strauss & distributing, selling, offering for sale, advertising, jeans
Co. and Levi Strauss (Phils.), Inc. v. Clinton Aparelle, the design herein complained of as substantially, if not
Inc. and/or Olympian Garments, Inc." exactly similar, to plaintiffs’ "Dockers and Design"
trademark.
The Complaint alleged that LS & Co., a foreign
corporation duly organized and existing under the laws 3. That after trial on the merits, judgment be rendered as
of the State of Delaware, U.S.A., and engaged in the follows:
apparel business, is the owner by prior adoption and use
since 1986 of the internationally famous "Dockers and a. Affirming and making permanent the writ of
Design" trademark. This ownership is evidenced by its preliminary injunction;
valid and existing registrations in various member
countries of the Paris Convention. In the Philippines, it b. Ordering that all infringing jeans in the possession of
has a Certificate of Registration No. 46619 in the either or both defendants as the evidence may warrant,
Principal Register for use of said trademark on pants, their officers, employees, agents, retailers, dealers or
shirts, blouses, skirts, shorts, sweatshirts and jackets assigns, be delivered to the Honorable Court of plaintiffs,
under Class 25.9 and be accordingly destroyed;13

The "Dockers and Design" trademark was first used in Acting on the prayer for the issuance of a TRO, the trial
the Philippines in or about May 1988, by LSPI, a court issued an Order14 setting it for hearing on 5 May
domestic corporation engaged in the manufacture, sale 1998. On said date, as respondent failed to appear
and distribution of various products bearing trademarks despite notice and the other defendant, Olympian
owned by LS & Co. To date, LSPI continues to Garments, had yet to be notified, the hearing was re-
manufacture and sell Dockers Pants with the "Dockers scheduled on 14 May 1998.15
and Design" trademark.10
On 14 May 1998, neither Clinton Apparelle nor Olympian
LS & Co. and LSPI further alleged that they discovered Garments appeared. Clinton Apparelle claimed that it
the presence in the local market of jeans under the was not notified of such hearing. Only Olympian
brand name "Paddocks" using a device which is Garments allegedly had been issued with summons.
substantially, if not exactly, similar to the "Dockers and Despite the absence of the defendants, the hearing on
Design" trademark owned by and registered in the name the application for the issuance of a TRO continued. 16
of LS & Co., without its consent. Based on their
information and belief, they added, Clinton Apparelle
manufactured and continues to manufacture such The following day, the trial court issued
"Paddocks" jeans and other apparel. an Order17  granting the TRO applied for, the pertinent
portions of which state:
…Considering the absence of counsel/s for the injunction bond of ₱2,500,000.00 appears to be in order.
defendant/s during the summary hearing scheduled on (see Sections 3 and 4, Rule 58, 1997 Rules of Civil
May 5, 1998 and also during the re-scheduled summary Procedure)
hearing held on May 14, 1998 set for the purpose of
determining whether or not a Temporary Restraining IN VIEW OF THE FOREGOING, the plaintiffs’ prayer for
Order shall be issued, this Court allowed the counsel for the issuance of a writ of preliminary injunction is
the plaintiffs to present on May 14, 1998 their GRANTED. Accordingly, upon the plaintiffs’ filing, within
arguments/evidences in support of their application. After ten (10) days from their receipt hereof, an injunction
hearing the arguments presented by the counsel for the bond of ₱2,500,000.00 executed to the defendants to the
plaintiffs during the summary hearing, this Court is of the effect that the plaintiffs will pay all damages the
considered and humble view that grave injustice and defendants may sustain by reason of this injunction in
irreparable injury to the plaintiffs would arise before the case the Court should finally decide that the plaintiffs are
matter of whether or not the application for the issuance not entitled thereto, let a writ of preliminary injunction
of a Writ of Preliminary Injunction can be heard, and that, issue enjoining or restraining the commission of the acts
in the interest of justice, and in the meantime, a complained of in the verified Complaint in this case, and
Temporary Restraining Order be issued. specifically, for the defendants, their officers, employees,
agents, representatives, dealers and retailers or assigns
WHEREFORE, let this Temporary Restraining Order be or persons acting in their behalf to cease and desist from
issued restraining the defendants, their officers, manufacturing, distributing, selling, offering for sale,
employees, agents, representatives, dealers, retailers or advertising, or otherwise using, denims, jeans or pants
assigns from committing the acts complained of in the with the design complained of in the verified Complaint in
verified Complaint, and specifically, for the defendants, this case, which is substantially, if not exactly, similar to
their officers, employees, agents, representatives, plaintiffs’ "DOCKERS and DESIGN" trademark or logo
dealers and retailers or assigns, to cease and desist as covered by the Bureau of Patents, Trademarks and
from manufacturing, distributing, selling, offering for sale, Technology Transfer Certificate of Registration No.
advertising or otherwise using denims, jeans or pants 46619, until after this case shall have been decided on
with the design complained of in the verified Complaint the merits and/or until further orders from this Court. 20
as substantially, if not exactly similar, to plaintiffs’
"Dockers and Design" trademark; until after the The evidence considered by the trial court in granting
application/prayer for the issuance of a Writ of injunctive relief were as follows: (1) a certified true copy
Preliminary Injunction is heard/resolved, or until further of the certificate of trademark registration for "Dockers
orders from this Court. and Design"; (2) a pair of DOCKERS pants bearing the
"Dockers and Design" trademark; (3) a pair of
The hearing on the application for the issuance of a Writ "Paddocks" pants bearing respondent’s assailed logo;
of Preliminary Injunction as embodied in the verified (4) the Trends MBL Survey Report purportedly proving
Complaint is set on May 26, 1998 (Tuesday) at 2:00 that there was confusing similarity between two marks;
P.M. which setting is intransferable in character (5) the affidavit of one Bernabe Alajar which recounted
considering that the lifetime of this Temporary petitioners’ prior adoption, use and registration of the
Restraining Order is twenty (20) days from date hereof. 18 "Dockers and Design" trademark; and (6) the affidavit of
one Mercedes Abad of Trends MBL, Inc. which detailed
On 4 June 1998, the trial court issued the methodology and procedure used in their survey and
another Order19 granting the writ of preliminary the results thereof.21
injunction, to wit:
Clinton Apparelle thereafter filed a Motion to
O R D E R Dismiss22 and a Motion for Reconsideration23 of
the Order granting the writ of preliminary injunction.
Meantime, the trial court issued an Order24  approving the
This resolves the plaintiffs’ application or prayer for the
bond filed by petitioners.
issuance of a writ of preliminary injunction as embodied
in the verified complaint in this case. Parenthetically, this
Court earlier issued a temporary restraining order. On 22 June 1998, the trial court required 25  the parties to
(see Order dated May 15, 1998; see also Order dated file their "respective citation of authorities/
May 26, 1998) jurisprudence/Supreme Court decisions" on whether or
not the trial court may issue the writ of preliminary
injunction pending the resolution of the Motion for
After a careful perusal of the contents of the pleadings
Reconsideration and the Motion to Dismiss filed by
and documents on record insofar as they are pertinent to
respondent.
the issue under consideration, this Court finds that at this
point in time, the plaintiffs appear to be entitled to the
relief prayed for and this Court is of the considered belief On 2 October 1998, the trial court denied Clinton
and humble view that, without necessarily delving on the Apparelle’s Motion to Dismiss and Motion for
merits, the paramount interest of justice will be better Reconsideration in an Omnibus Order,26 the pertinent
served if the status quo shall be maintained and that an portions of which provide:
After carefully going over the contents of the pleadings in The Court of Appeals also held that the issuance of the
relation to pertinent portions of the records, this Court is writ of preliminary injunction is questionable. In its
of the considered and humble view that: opinion, herein petitioners failed to sufficiently establish
its material and substantial right to have the writ issued.
On the first motion, the arguments raised in the plaintiffs’ Secondly, the Court of Appeals observed that the survey
aforecited Consolidated Opposition appears to be presented by petitioners to support their contentions was
meritorious. Be that as it may, this Court would like to commissioned by petitioners. The Court of Appeals
emphasize, among other things, that the complaint remarked that affidavits taken ex-parte are generally
states a cause of action as provided under paragraphs 1 considered to be inferior to testimony given in open
to 18 thereof. court. The appellate court also considered that the injury
petitioners have suffered or are currently suffering may
be compensated in terms of monetary consideration, if
On the second motion, the arguments raised in the
after trial, a final judgment shall be rendered in their
plaintiffs’ aforecited Consolidated Opposition likewise
favor.31
appear to be impressed with merit. Besides, there
appears to be no strong and cogent reason to reconsider
and set aside this Court’s Order dated June 4, 1998 as it In addition, the Court of Appeals strongly believed that
has been shown so far that the trademark or logo of the implementation of the questioned writ would
defendants is substantially, if not exactly, similar to effectively shut down respondent’s business, which in its
plaintiffs’ "DOCKERS and DESIGN" trademark or logo opinion should not be sanctioned. The Court of Appeals
as covered by BPTTT Certificate of Registration No. thus set aside the orders of the trial court dated 15 May
46619 even as the BPTTT Certificate of Registration No. 1998 and 4 June 1998, respectively issuing a temporary
49579 of Clinton Apparelle, Inc. is only for the mark or restraining order and granting the issuance of a writ of
word "PADDOCKS" (see Records, p. 377) In any event, preliminary injunction.
this Court had issued an Order dated June 18, 1998 for
the issuance of the writ of preliminary injunction after the With the denial of their Motion for
plaintiffs filed the required bond of ₱2,500,000.00. Reconsideration,32 petitioners are now before this Court
seeking a review of the appellate
IN VIEW OF THE FOREGOING, the aforecited Motion court’s Decision  and Resolution. LS & Co. and LSPI
To Dismiss and Motion For Reconsideration are both claim that the Court of Appeals committed serious error
DENIED for lack of merit, and accordingly, this Court’s in: (1) disregarding the well-defined limits of the writ of
Order dated June 18, 1998 for the issuance of the writ of certiorari that questions on the sufficiency of evidence
preliminary injunction is REITERATED so the writ of are not to be resolved in such a petition; (2) in holding
preliminary injunction could be implemented unless the that there was no confusion between the two marks; (3)
implementation thereof is restrained by the Honorable in ruling that the erosion of petitioners’ trademark is not
Court of Appeals or Supreme Court. protectable by injunction; (4) in ignoring the procedure
previously agreed on by the parties and which was
adopted by the trial court; and (5) in declaring that the
The writ of preliminary injunction was thereafter issued
preliminary injunction issued by the trial court will lead to
on 8 October 1998.27
the closure of respondent’s business.
Thus, Clinton Apparelle filed with the Court of Appeals
In its Comment,33 Clinton Apparelle maintains that only
a Petition28 for certiorari, prohibition and mandamus with
questions of law may be raised in an appeal by certiorari
prayer for the issuance of a temporary restraining order
under Rule 45 of the Rules of Court. It asserts that the
and/or writ of preliminary injunction, assailing the orders
question of whether the Court of Appeals erred in: (1)
of the trial court dated 15 May 1998, 4 June 1998 and 2
disregarding the survey evidence; (2) ruling that there
October 1998.
was no confusion between the two marks; and (c) finding
that the erosion of petitioners’ trademark may not be
On 20 October 1998, the Court of Appeals issued protected by injunction, are issues not within the ambit of
a Resolution29 requiring herein petitioners to file their a petition for review on certiorari under Rule 45. Clinton
comment on the Petition and at the same time issued Apparelle also contends that the Court of Appeals acted
the prayed-for temporary restraining order. correctly when it overturned the writ of preliminary
injunction issued by the trial court. It believes that the
The appellate court rendered on 21 December 1998 its issued writ in effect disturbed the status quo and
now assailed Decision granting Clinton Apparelle’s disposed of the main case without trial.
petition. The Court of Appeals held that the trial court did
not follow the procedure required by law for the issuance There is no merit in the petition.
of a temporary restraining order as Clinton Apparelle
was not duly notified of the date of the summary hearing
At issue is whether the issuance of the writ of preliminary
for its issuance. Thus, the Court of Appeals ruled that the
injunction by the trial court was proper and whether the
TRO had been improperly issued.30
Court of Appeals erred in setting aside the orders of the
trial court.
Section 1, Rule 58 of the Rules of Court defines a refrain from doing a particular act; and (2) a mandatory
preliminary injunction as an order granted at any stage of injunction which commands the performance of some
an action prior to the judgment or final order requiring a positive act to correct a wrong in the past.39
party or a court, agency or a person to refrain from a
particular act or acts. Injunction is accepted as the strong The Court of Appeals did not err in reviewing proof
arm of equity or a transcendent remedy to be used adduced by petitioners to support its application for the
cautiously as it affects the respective rights of the issuance of the writ. While the matter of the issuance of
parties, and only upon full conviction on the part of the a writ of preliminary injunction is addressed to the sound
court of its extreme necessity. An extraordinary remedy, discretion of the trial court, this discretion must be
injunction is designed to preserve or maintain the status exercised based upon the grounds and in the manner
quo  of things and is generally availed of to prevent provided by law. The exercise of discretion by the trial
actual or threatened acts until the merits of the case can court in injunctive matters is generally not interfered with
be heard.34 It may be resorted to only by a litigant for the save in cases of manifest abuse. 40 And to determine
preservation or protection of his rights or interests and whether there was abuse of discretion, a scrutiny must
for no other purpose during the pendency of the principal be made of the bases, if any, considered by the trial
action.35 It is resorted to only when there is a pressing court in granting injunctive relief. Be it stressed that
necessity to avoid injurious consequences, which cannot injunction is the strong arm of equity which must be
be remedied under any standard compensation. The issued with great caution and deliberation, and only in
resolution of an application for a writ of preliminary cases of great injury where there is no commensurate
injunction rests upon the existence of an emergency or remedy in damages.41
of a special recourse before the main case can be heard
in due course of proceedings.36 In the present case, we find that there was scant
justification for the issuance of the writ of preliminary
Section 3, Rule 58, of the Rules of Court enumerates the injunction.
grounds for the issuance of a preliminary injunction:
Petitioners anchor their legal right to "Dockers and
SEC. 3. Grounds for issuance of preliminary injunction.  – Design" trademark on the Certificate of Registration
A preliminary injunction may be granted when it is issued in their favor by the Bureau of Patents,
established: Trademarks and Technology Transfer.* According to
Section 138 of Republic Act No. 8293,42 this Certificate
(a) That the applicant is entitled to the relief demanded, of Registration is prima facie  evidence of the validity of
and the whole or part of such relief consists in restraining the registration, the registrant’s ownership of the mark
the commission or continuance of the act or acts and of the exclusive right to use the same in connection
complained of, or in requiring the performance of an act with the goods or services and those that are related
or acts, either for a limited period or perpetually; thereto specified in the certificate. Section 147.1 of said
law likewise grants the owner of the registered mark the
(b) That the commission, continuance, or non- exclusive right to prevent all third parties not having the
performance of the act or acts complained of during the owner’s consent from using in the course of trade
litigation would probably work injustice to the applicant; identical or similar signs for goods or services which are
or identical or similar to those in respect of which the
trademark is registered if such use results in a likelihood
of confusion.
(c) That a party, court, agency or a person is doing,
threatening, or is attempting to do, or is procuring or
suffering to be done, some act or acts probably in However, attention should be given to the fact that
violation of the rights of the applicant respecting the petitioners’ registered trademark consists of two
subject of the action or proceeding, and tending to elements: (1) the word mark "Dockers" and (2) the wing-
render the judgment ineffectual. shaped design or logo. Notably, there is only one
registration for both features of the trademark giving the
impression that the two should be considered as a single
Under the cited provision, a clear and positive right
unit. Clinton Apparelle’s trademark, on the other hand,
especially calling for judicial protection must be shown.
uses the "Paddocks" word mark on top of a logo which
Injunction is not a remedy to protect or enforce
according to petitioners is a slavish imitation of the
contingent, abstract, or future rights; it will not issue to
"Dockers" design. The two trademarks apparently differ
protect a right not in esse and which may never arise, or
in their word marks ("Dockers" and "Paddocks"), but
to restrain an act which does not give rise to a cause of
again according to petitioners, they employ similar or
action. There must exist an actual right. 37 There must be
identical logos. It could thus be said that respondent only
a patent showing by the complaint that there exists a
"appropriates" petitioners’ logo and not the word mark
right to be protected and that the acts against which the
"Dockers"; it uses only a portion of the registered
writ is to be directed are violative of said right.38
trademark and not the whole.
There are generally two kinds of preliminary injunction:
(1) a prohibitory injunction which commands a party to
Given the single registration of the trademark "Dockers "Dockers and Design" has acquired a strong degree of
and Design" and considering that respondent only uses distinctiveness and whether the other two elements are
the assailed device but a different word mark, the right to present for their cause to fall within the ambit of the
prevent the latter from using the challenged "Paddocks" invoked protection. The Trends MBL Survey Report
device is far from clear. Stated otherwise, it is not which petitioners presented in a bid to establish that
evident whether the single registration of the trademark there was confusing similarity between two marks is not
"Dockers and Design" confers on the owner the right to sufficient proof of any dilution that the trial court must
prevent the use of a fraction thereof in the course of enjoin.
trade. It is also unclear whether the use without the
owner’s consent of a portion of a trademark registered in The Court also finds that the trial court’s order granting
its entirety constitutes material or substantial invasion of the writ did not adequately detail the reasons for the
the owner’s right. grant, contrary to our ruling in University of the
Philippines v. Hon. Catungal Jr., 45 wherein we held that:
It is likewise not settled whether the wing-shaped logo,
as opposed to the word mark, is the dominant or central The trial court must state its own findings of fact and cite
feature of petitioners’ trademark—the feature that particular law to justify grant of preliminary injunction.
prevails or is retained in the minds of the public—an Utmost care in this regard is demanded.46
imitation of which creates the likelihood of deceiving the
public and constitutes trademark infringement.43 In sum, The trial court in granting the injunctive relief tersely
there are vital matters which have yet and may only be ratiocinated that "the plaintiffs appear to be entitled to
established through a full-blown trial. the relief prayed for and this Court is of the considered
belief and humble view that, without necessarily delving
From the above discussion, we find that petitioners’ right on the merits, the paramount interest of justice will be
to injunctive relief has not been clearly and unmistakably better served if the status quo shall be maintained."
demonstrated. The right has yet to be determined. Clearly, this statement falls short of the requirement laid
Petitioners also failed to show proof that there is material down by the above-quoted case. Similarly,
and substantial invasion of their right to warrant the in Developers Group of Companies, Inc. v. Court of
issuance of an injunctive writ. Neither were petitioners Appeals,47 we held that it was "not enough" for the trial
able to show any urgent and permanent necessity for the court, in its order granting the writ, to simply say that it
writ to prevent serious damage. appeared "after hearing that plaintiff is entitled to the
relief prayed for."
Petitioners wish to impress upon the Court the urgent
necessity for injunctive relief, urging that the erosion or In addition, we agree with the Court of Appeals in its
dilution of their trademark is protectable. They assert that holding that the damages the petitioners had suffered or
a trademark owner does not have to wait until the mark continue to suffer may be compensated in terms of
loses its distinctiveness to obtain injunctive relief, and monetary consideration. As held in Government Service
that the mere use by an infringer of a registered mark is Insurance System v. Florendo:48
already actionable even if he has not yet profited thereby
or has damaged the trademark owner. …a writ of injunction should never have been issued
when an action for damages would adequately
Trademark dilution is the lessening of the capacity of a compensate the injuries caused. The very foundation of
famous mark to identify and distinguish goods or the jurisdiction to issue the writ of injunction rests in the
services, regardless of the presence or absence of: (1) probability of irreparable injury, inadequacy of pecuniary
competition between the owner of the famous mark and estimation and the prevention of the multiplicity of suits,
other parties; or (2) likelihood of confusion, mistake or and where facts are not shown to bring the case within
deception. Subject to the principles of equity, the owner these conditions, the relief of injunction should be
of a famous mark is entitled to an injunction "against refused.49
another person’s commercial use in commerce of a mark
or trade name, if such use begins after the mark has We also believe that the issued injunctive writ, if allowed,
become famous and causes dilution of the distinctive would dispose of the case on the merits as it would
quality of the mark." This is intended to protect famous effectively enjoin the use of the "Paddocks" device
marks from subsequent uses that blur distinctiveness of without proof that there is basis for such action. The
the mark or tarnish or disparage it.44 prevailing rule is that courts should avoid issuing a writ of
preliminary injunction that would in effect dispose of the
Based on the foregoing, to be eligible for protection from main case without trial.50 There would be a prejudgment
dilution, there has to be a finding that: (1) the trademark of the main case and a reversal of the rule on the burden
sought to be protected is famous and distinctive; (2) the of proof since it would assume the proposition which
use by respondent of "Paddocks and Design" began petitioners are inceptively bound to prove.51
after the petitioners’ mark became famous; and (3) such
subsequent use defames petitioners’ mark. In the case Parenthetically, we find no flaw in the Court of Appeals’
at bar, petitioners have yet to establish whether disquisition on the consequences of the issued
injunction. An exercise of caution, we believe that such
reflection is necessary to weigh the alleged entitlement
to the writ vis-à-vis its possible effects. The injunction
issued in the instant case is of a serious nature as it
tends to do more than to maintain the status quo. In fact,
the assailed injunction if sustained would bring about the
result desired by petitioners without a trial on the merits.

Then again, we believe the Court of Appeals

overstepped its authority when it declared that the
"alleged similarity as to the two logos is hardly confusing
to the public." The only issue brought before the Court of
Appeals through respondent’s Petition under Rule 65 of
the Rules of Court involved the grave abuse of discretion
allegedly committed by the trial court in granting the TRO
and the writ of preliminary injunction. The appellate court
in making such a statement went beyond that issue and
touched on the merits of the infringement case, which
remains to be decided by the trial court. In our view, it
was premature for the Court of Appeals to declare that
there is no confusion between the two devices or logos.
That matter remains to be decided on by the trial court.

Finally, we have no contention against the procedure

adopted by the trial court in resolving the application for
an injunctive writ and we believe that respondent was
accorded due process. Due process, in essence, is
simply an opportunity to be heard. And in applications for
preliminary injunction, the requirement of hearing and
prior notice before injunction may issue has been
relaxed to the point that not all petitions for preliminary
injunction must undergo a trial-type hearing, it being a
hornbook doctrine that a formal or trial-type hearing is
not at all times and in all instances essential to due
process. Due process simply means giving every
contending party the opportunity to be heard and the
court to consider every piece of evidence presented in
their favor. Accordingly, this Court has in the case of Co
v. Calimag, Jr.,52 rejected a claim of denial of due
process where such claimant was given the opportunity
to be heard, having submitted his counter-affidavit and
memorandum in support of his position.53

After a careful consideration of the facts and arguments

of the parties, the Court finds that petitioners did not
adequately prove their entitlement to the injunctive writ.
In the absence of proof of a legal right and the injury
sustained by the applicant, an order of the trial court
granting the issuance of an injunctive writ will be set
aside for having been issued with grave abuse of
discretion.54 Conformably, the Court of Appeals was
correct in setting aside the assailed orders of the trial
court.

WHEREFORE, the instant petition is DENIED.

The Decision  of the Court of Appeals dated 21
December 1998 and its Resolution  dated 10 May 1999
are AFFIRMED. Costs against petitioners.

SO ORDERED.
 petitioner’s motion for preliminary hearing on affirmative
defenses with motion to dismiss.8
G.R. No. 157216             November 20, 2003
With the denial of the motion for reconsideration on
246 CORPORATION, doing business under the name March 16, 2001, petitioner filed a petition for certiorari
and style of ROLEX MUSIC LOUNGE, petitioner, with the Court of Appeals contending that the trial court
vs. gravely abused its discretion in issuing the October 27,
HON. REYNALDO B. DAWAY, in his capacity as 2000 and March 16, 2001 orders.
Presiding Judge of Branch 90 of the Regional Trial
Court of Quezon City, MONTRES ROLEX S.A. and On November 28, 2002, the Court of Appeals dismissed
ROLEX CENTRE PHIL. LIMITED, respondents. the petition. The motion for reconsideration filed by
petitioner was denied. Hence, the instant petition
YNARES-SANTIAGO, J.: anchored on the following grounds:

This is a petition for review on certiorari under Rule 45 of I

the 1997 Rules of Civil Procedure assailing the
November 28, 2002 Decision1 of the Court of Appeals in IN ISSUING THE ASSAILED DECISIONS, THE
CA-G.R. SP No. 64660 which dismissed the petition for HONORABLE COURT OF APPEALS
certiorari filed by petitioner, as well as the PERFUNCTORILY BRUSHED ASIDE THE
Resolution2 dated February 13, 2003 denying its motion CONTROLLING PRECEDENTS LAID DOWN
for reconsideration. BY THIS HONORABLE COURT IN ESSO
STANDARD EASTERN, INC. VS. COURT OF
The undisputed facts show that on November 26, 1998, APPEALS AND UNITED CIGARETTE
respondents Montres Rolex S.A. and Rolex Centre Phil., CORPORATION AND OTHER COMPANION
Limited, owners/proprietors of Rolex and Crown Device, CASES HOLDING THAT NO TRADEMARK
filed against petitioner 246 Corporation the instant suit INFRINGEMENT CAN POSSIBLY OCCUR
for trademark infringement and damages with prayer for WHERE THE CONTENDING PARTIES DEAL
the issuance of a restraining order or writ of preliminary WITH GOODS AND SERVICES THAT ARE
injunction3 before the Regional Trial Court of Quezon TOTALLY UNRELATED AND NON-
City, Branch 90. Respondents alleged that sometime in COMPETING WITH EACH OTHER.
July 1996, petitioner adopted and, since then, has been
using without authority the mark "Rolex" in its business II
name "Rolex Music Lounge" as well as in its newspaper
advertisements as – "Rolex Music Lounge, KTV, Disco & IN ARBITRARILY AND CAPRICIOUSLY
Party Club." RULING THAT THE ISSUES RAISED IN
PETITIONER’S CERTIORARI PETITION ARE
In its answer raising special affirmative defenses, QUESTIONS OF FACT, THE HONORABLE
petitioner argued that respondents have no cause of COURT OF APPEALS VIOLATED NOT ONLY
action because no trademark infringement exist; that no PETITIONERS SUBSTANTIVE DUE PROCESS
confusion would arise from the use by petitioner of the RIGHTS BUT ALSO THE WELL-SETTLED
mark "Rolex" considering that its entertainment business RULE THAT THE ALLEGATIONS OF THE
is totally unrelated to the items catered by respondents COMPLAINT IS HYPOTHETICALLY ADMITTED
such as watches, clocks, bracelets and parts thereof. It WHEN THE MOTION TO DISMISS IS
also contended that the complaint was not properly GROUNDED UPON LACK OF CAUSE OF
verified and certified against forum shopping considering ACTION. MOREOVER, INDEPENDENT OF
that Atty. Alonzo Ancheta, the counsel of record of THE HYPOTHETICALLY ADMITTED FACTS
respondents who signed the verification and certification, EMBODIED IN THE COMPLAINT A QUO,
was not authorized to represent respondents.4 THERE ARE SELF-EVIDENT FACTS AND
IMPLIEDLY ADMITTED FACTS CONTAINED IN
On July 21, 2000, petitioner filed a motion for preliminary PRIVATE RESPONDENTS’ PLEADINGS THAT
hearing on its affirmative defenses.5 Subsequently, on WOULD CLEARLY AND UNMISTAKABLY
motion of petitioner, the trial court issued a subpoena ad SHOW PRIVATE RESPONDENTS’ LACK OF
testificandum requiring Atty. Alonzo Ancheta to appear at CAUSE OF ACTION AGAINST HEREIN
the preliminary hearing.6 Respondents, in the meantime, PETITIONER.
filed a Comment and Opposition 7 to the motion for
preliminary hearing and a motion to quash the subpoena III
ad testificandum.
THE HONORABLE COURT OF APPEALS
In an Order dated October 27, 2000, the trial court VIOLATED PETITIONER’S RIGHT TO
quashed the subpoena ad testificandum and denied SUBSTANTIVE DUE PROCESS WHEN IT
 ARBITRARILY AND CAPRICIOUSLY RULED THE FILING OF THE COMPLAINT A QUO. BY
THAT WHAT WAS SPECIFICALLY DENIED IN REASON THEREOF, PRIVATE
THE ASSAILED OCTOBER 20, 2000 ORDER RESPONDENTS COULD NOT BE DEEMED TO
IS PETITIONER’S MOTION FOR HAVE VOLUNTARILY APPEARED BEFORE
PRELIMINARY HEARING ON DEFENDANT’S THE RESPONDENT JUDGE;
AFFIRMATIVE DEFENSES AND NOT CONSEQUENTLY, THE TRIAL COURT COULD
PETITIONER’S MOTION TO DISMISS PER SE NOT HAVE VALIDLY ACQUIRED
CONSIDERING THAT: JURISDICTION OVER THE PERSON OF
PRIVATE RESPONDENTS.
A. THERE IS ABSOLUTELY NOTHING
IN THE ORDER DATED OCTOBER 20, V
2000 OF RESPONDENT JUDGE
WHICH SUGGESTS THAT THE IN ARBITRARILY AND CAPRICIOUSLY
RESOLUTION OF PETITIONER’S AFFIRMING RESPONDENT JUDGE’S
MOTION TO DISMISS PER SE WAS QUASHAL OF THE SUBPOENA DATED 14
HELD IN ABEYANCE BY THE AUGUST 2000 DIRECTED AGAINST ATTY.
RESPONDENT JUDGE. HENCE THE ALONZO ANCHETA, THE HONORABLE
SAID ORDER DATED OCTOBER 20, COURT OF APPEALS VIOLATED NOT ONLY
2000 ALSO CONSTITUTES A DENIAL PETITIONER’S SUBSTANTIVE DUE
ON THE MERITS OF PETITIONER’S PROCESS RIGHTS, BUT ALSO SECTION 9,
MOTION TO DISMISS PER SE AND RULE 132 AND SECTION 7 RULE 133 OF THE
NOT MERELY OF PETITIONER’S 1989 REVISED RULES ON EVIDENCE, AND
MOTION FOR PRELIMINARY THE RULING OF THIS HONORABLE COURT
HEARING THEREON. IN THE CASE OF PEOPLE VS. RIVERA.9

B. PRIVATE RESPONDENTS’ Simply put, the issues are as follows – (1) whether the
COMMENT AND OPPOSITION DATED trial court denied not only petitioner’s motion for
11 AUGUST 2000, WHICH WAS CITED preliminary hearing on its affirmative defenses but its
AND SUSTAINED BY RESPONDENT motion to dismiss as well; (2) if the answer is in the
JUDGE, CLEARLY TRAVERSED THE affirmative, whether or not the trial court gravely abused
MERITS OF THE GROUNDS FOR its discretion in denying said motions; and (3) whether
PETITIONER’S MOTION TO DISMISS the trial court gravely abused its discretion in quashing
PER SE. HENCE, THE SAID 20 the subpoena ad testificandum issued against Atty.
OCTOBER 2000 ORDER’S DENIAL OF Ancheta.
PETITIONER’S MOTION IS NOT
LIMITED TO THE MOTION FOR Anent the first issue, we find that what was denied in the
PRELIMINARY HEARING BUT ALSO order dated October 27, 2000 was not only the motion
CONSTITUTES A DENIAL OF for preliminary hearing but the motion to dismiss as well.
PETITIONER’S MOTION TO DISMISS A reading of the dispositive portion of said order shows
PER SE. that the trial court neither qualified its denial nor held in
abeyance the ruling on petitioner’s motion to dismiss
IV thus –

IN ARBITRARILY AND CAPRICIOUSLY IN VIEW OF THE FOREGOING, the aforecited Motion

RULING THAT ATTY. ALONZO ANCHETA To Quash Subpoena Ad Testificandum is granted; and
PROPERLY VERIFIED AND CERTIFIED the aforecited Motion For Preliminary Hearing On
PRIVATE RESPONDENTS’ COMPLAINT A Defendant’s Affirmative Defenses With Motion To
QUO, THE HONORABLE COURT OF dismiss The Instant Complaint Based On Said
APPEALS VIOLATED NOT ONLY Affirmative Defenses is denied.10 (Emphasis supplied)
PETITIONER’S SUBSTANTIVE DUE
PROCESS RIGHTS, BUT ALSO THE In issuing the assailed order, the trial court ruled on the
DOCTRINE OF SEPARATE CORPORATE merits of petitioner’s Motion to Dismiss vis-à-
PERSONALITY; CONSIDERING THAT THE vis respondents’ Comment and Opposition which clearly
RECORDS OF THIS CASE IS (sic) traversed the affirmative defenses raised by petitioner, to
COMPLETELY BEREFT AND DEVOID OF ANY wit:
DULY EXECUTED SPECIAL POWER OF
ATTORNEY, EMANATING FROM PRIVATE
RESPONDENTS, WHICH EXPLICITLY AND After carefully going over the pleadings, this
SPECIFICALLY AUTHORIZES ATTY. ALONZO Court finds, on the first motion that the
ANCHETA TO REPRESENT PRIVATE arguments raised in the said motion and the
RESPONDENTS MONTRES ROLEX S.A. IN reply filed in connection thereto appear to be
meritorious; and on the second motion, that the
 arguments raised in the comments and Sec. 123. Registrability. – 123.1. A mark cannot
opposition and the rejoinder filed by the plaintiffs be registered if it:
likewise appear to be meritorious.11
x x x           x x x           x x x
Moreover, it is presumed that all matters within an issue
raised in a case were passed upon by the court. In the (f) Is identical with, or confusingly similar to, or
absence of evidence to the contrary, the presumption is constitutes a translation of a mark considered
that the court a quo discharged its task properly.12 well-known in accordance with the preceding
paragraph, which is registered in the Philippines
In Municipality of Biñan Laguna v. Court of with respect to goods or services which are not
Appeals,13 decided under the old Rules of Civil similar to those with respect to which registration
Procedure, it was held that a preliminary hearing is applied for: Provided, That use of the mark in
permitted under Rule 16, Section 5, is not mandatory relation to those goods or services would
even when the same is prayed for. It rests largely on the indicate a connection between those goods or
sound discretion of the trial court, thus – services, and the owner of the registered
mark: Provided, further, That the interest of the
SEC. 5. Pleading grounds as affirmative owner of the registered mark are likely to be
defenses. — Any of the grounds for dismissal damaged by such use; (Emphasis supplied)
provided for in this Rule, except improper venue,
may be pleaded as an affirmative defense, A junior user of a well-known mark on goods or services
and a preliminary hearing may be had thereon which are not similar to the goods or services, and are
as if a motion to dismiss had been filed. therefore unrelated, to those specified in the certificate of
(Emphasis supplied) registration of the well-known mark is precluded from
using the same on the entirely unrelated goods or
The use of the word "may" in the aforequoted provision services, subject to the following requisites, to wit:
shows that such a hearing is not a matter of right
demandable from the trial court; it is not mandatory but 1. The mark is well-known internationally and in
discretionary. "May" is an auxiliary verb indicating liberty, the Philippines. Under Rule 102 of the Rules and
opportunity, permission and possibility.14 Such Regulations on Trademarks, Service Marks,
interpretation is specifically stated under the 1997 Rules Trade Names and Marked or Stamped
of Civil Procedure. Rule 16, Section 6, now provides that Containers,17 in determining whether a mark is
a grant of a preliminary hearing rests on the well known, the following criteria or any
sound discretion of the court, to wit – combination thereof may be taken into account:

SEC. 6. Pleading grounds as affirmative (a) the duration, extent and geographical
defenses.— If no motion to dismiss has been area of any use of the mark, in
filed, any of the grounds for dismissal provided particular, the duration, extent and
for in this Rule may be pleaded as an affirmative geographical area of any promotion of
defense in the answer and, in the discretion of the mark, including advertising or
the court, a preliminary hearing may be had publicity and presentation, at fairs or
thereon as if a motion to dismiss had been exhibitions, of the goods and/or services
filed. (Emphasis supplied) to which the mark applies;

In the case at bar, the Court of Appeals did not err in (b) the market share in the Philippines
finding that no abuse of discretion could be ascribed to and in other countries, of the goods
the trial court’s denial of petitioner’s motion for and/or services to which the mark
preliminary hearing on its affirmative defenses with applies;
motion to dismiss. The issue of whether or not a
trademark infringement exists, is a question of fact that (c) the degree of the inherent or
could best be determined by the trial court. acquired distinction of the mark;

Under the old Trademark Law15 where the goods for (d) the quality-image or reputation
which the identical marks are used are unrelated, there acquired by the mark;
can be no likelihood of confusion and there is therefore
no infringement in the use by the junior user of the (e) the extent to which the mark has
registered mark on the entirely different goods. 16 This been registered in the world;
ruling, however, has been to some extent, modified by
Section 123.1(f) of the Intellectual Property Code
(Republic Act No. 8293), which took effect on January 1, (f) the exclusivity of the registration
1998. The said section reads: attained by the mark in the world;
 (g) the extent to which the mark has during the trial together with the substantive issues
been used in the world; raised by petitioner.

(h) the exclusivity of use attained by the Considering that the trial court correctly denied
mark in the world; petitioner’s motion for preliminary hearing on its
affirmative defenses with motion to dismiss, there exists
(i) the commercial value attributed to the no reason to compel Atty. Ancheta to testify. Hence, no
mark in the world; abuse of discretion was committed by the trial court in
quashing the subpoena ad testificandum issued against
Atty. Ancheta.
(j) the record of successful protection of
the rights in the mark;
Grave abuse of discretion implies such capricious and
whimsical exercise of judgment as equivalent to lack of
(k) the outcome of litigations dealing
jurisdiction, or, in other words, where the power is
with the issue of whether the mark is a
exercised in an arbitrary or despotic manner by reason
well-known mark; and
of passion or personal hostility, and it must be so patent
and gross as to amount to an evasion of positive duty or
(l) the presence of absence of identical to a virtual refusal to perform the duty enjoined or to act
or similar marks validly registered for or at all in contemplation of law. None of these was
used on identical or similar goods or committed by the trial court; hence, the Court of Appeals
services and owned by persons other correctly dismissed the petition.
than the person claiming that his mark is
a well-known mark.
WHEREFORE, in view of all the foregoing, the petition
for review on certiorari filed by petitioner is DENIED. The
2. The use of the well-known mark on the November 28, 2002 Decision and the February 13, 2003
entirely unrelated goods or services would Resolution of the Court of Appeals in CA-G.R. SP No.
indicate a connection between such unrelated 64660 which dismissed the petition for certiorari filed by
goods or services and those goods or services petitioner are AFFIRMED.
specified in the certificate of registration in the
well known mark. This requirement refers to the
SO ORDERED.
likelihood of confusion of origin or business or
some business connection or relationship
between the registrant and the user of the mark.

3. The interests of the owner of the well-known

mark are likely to be damaged. For instance, if
the registrant will be precluded from expanding
its business to those unrelated good or services,
or if the interests of the registrant of the well-
known mark will be damaged because of the
inferior quality of the good or services of the
user.18

Section 123.1(f) is clearly in point because the Music

Lounge of petitioner is entirely unrelated to respondents’
business involving watches, clocks, bracelets, etc.
However, the Court cannot yet resolve the merits of the
present controversy considering that the requisites for
the application of Section 123.1(f), which constitute the
kernel issue at bar, clearly require determination facts of
which need to be resolved at the trial court. The
existence or absence of these requisites should be
addressed in a full blown hearing and not on a mere
preliminary hearing. The respondent must be given
ample opportunity to prove its claim, and the petitioner to
debunk the same.

The same is true with respect to the issue of whether

Atty. Alonzo Ancheta was properly authorized to sign the
verification and certification against forum shopping in
behalf of respondents. This could be properly resolved
 private respondent responded by asserting that
petitioner's understanding with Mayfair is binding only
between the parties thereto (Paragraph 5, Answer; p.
50, Rollo).

In the course of hearing the arguments for and against

the issuance of the requested writ of preliminary
injunction, petitioner impressed before the lower court
that he is seeking to enjoin the sale and distribution by
G.R. No. 86683 January 21, 1993 private respondent of the same goods in the market
(TSN, September 20, 1988, p. 35; p. 142, Rollo) but the
PHILIP S. YU, petitioner, Honorable Cesar V. Alejandria, Presiding Judge of
vs. Branch 34 was unperturbed, thusly:
THE HONORABLE COURT OF APPEALS, THE
HONORABLE PRESIDING JUDGE, RTC OF MANILA, Resolving plaintiff's motion embodied in
BRANCH XXXIV (34) and UNISIA MERCHANDISING the complaint for the issuance of a writ
CO., INC., respondents. of preliminary injunction after hearing,
but without prejudging the merits of the
Oscar M. Manahan for petitioner. case, and finding from the evidences
adduced by the plaintiff, that the terms
Ruben L. Pasamonte collaborating counsel for and conditions of the agency
petitioner. agreement, Exhibit "A-inj." between the
plaintiff and The House of Mayfair of
Alfredo G. De Guzman for private respondent. England for the exclusive distributorship
by the plaintiff of the latter's goods,
apertain to them; that there is no privity
of contract between the plaintiff and the
defendant; that the controversy in this
MELO, J.: case arose from a breach of contract by
the FNF Trading of Germany, for having
Petitioner, the exclusive distributor of the House of shipped goods it had purchased from
Mayfair wallcovering products in the Philippines, cried The House of Mayfair to the Philippines:
foul when his former dealer of the same goods, herein that as shown in Exh. "J-inj.", the House
private respondent, purchased the merchandise from the of Mayfair was demanding payment of
House of Mayfair in England through FNF Trading in 4,500.00 from the FNF Trading for
West Germany and sold said merchandise in the restitution of plaintiff's alleged loss on
Philippines. Both the court of origin and the appellate account of the shipment of the goods in
court rejected petitioner's thesis that private respondent question here in the Philippines and now
was engaged in a sinister form of unfair competition in the possession of the defendant; it
within the context of Article 28 of the New Civil Code (pp. appears to the Court that to restrain the
23 and 64, Rollo). Hence, the petition at bar. defendant from selling the goods it has
ordered from the FNF Trading of
There is no dispute that petitioner has had an exclusive Germany, would be without legal
sales agency agreement with the House of Mayfair since justification.
1987 to promote and procure orders for Mayfair
wallcovering products from customers in the Philippines WHEREFORE, the motion for the
(Annex "B", Petition; p. 30, Rollo). Even as petitioner issuance of a writ of preliminary
was such exclusive distributor, private respondent, which injunction to restrain the defendant from
was then petitioner's dealer, imported the some selling the goods it has ordered from the
goods via the FNF Trading which eventually sold the FNF Trading of Germany is hereby
merchandise in the domestic market (TSN, September DENIED. (p. 64, Rollo.)
20, 1988, p. 9; p. 117, Rollo). In the suit for injunction
which petitioner filed before the Regional Trial Court of The indifference of the trial court towards petitioner's
the National Capital Judicial Region stationed at Manila, supplication occasioned the filing of a petition for review
petitioner pressed the idea that he was practically by- on certiorari  with the Court of Appeals but Justice
passed and that private respondent acted in concert with Ordoñez-Benitez, with whom Justices Bellosillo and
the FNF Trading in misleading Mayfair into believing that Kalalo concurred, reacted in the same nonchalant
the goods ordered by the trading firm were intended for fashion. According to the appellate court, petitioner was
shipment to Nigeria although they were actually shipped not able to demonstrate the unequivocal right which he
to and sold in the Philippines (Paragraph 5, Complaint: sought to protect and that private respondent is a
p. 34, Rollo). Private respondent professed ignorance of complete stranger vis-a-vis  the covenant between
the exclusive contract in favor of petitioner. Even then,
petitioner and Mayfair. Apart from these considerations, To Our mind, the right to perform an exclusive
the reviewing authority noted that petitioner could be fully distributorship agreement and to reap the profits
compensated for the prejudice he suffered judging from resulting from such performance are proprietary rights
the tenor of Mayfair's correspondence to FNF Trading which a party may protect (30 Am. Jur. Section 19, pp.
wherein Mayfair took the cudgels for petitioner in seeking 71-72: Jurado, Comments and Jurisprudence
compensation for the latter's loss as a consequence of on Obligations and Contracts, 1983 8th Rev. Ed., p. 336)
private respondent's scheme (p. 79, Rollo; pp. 23- which may otherwise not be diminished, nay, rendered
29, Rollo). illusory by the expedient act of utilizing or interposing a
person or firm to obtain goods from the supplier to defeat
In the petition at hand, petitioner anchors his plea for the very purpose for which the exclusive distributorship
redress on his perception that private respondent has was conceptualized, at the expense of the sole
distributed and continues to sell Mayfair covering authorized distributor (43 C.J.S. 597).
products in contravention of petitioner's exclusive right
conferred by the covenant with the House of Mayfair. Another circumstance which respondent court
overlooked was petitioner's suggestion, which was not
On March 13, 1989, a temporary restraining order was disputed by herein private respondent in its comment,
issued to last until further notice from this Court directed that the House of Mayfair in England was duped into
against private respondent (p. 188, Rollo). believing that the goods ordered through the FNF
Notwithstanding such proscription, private respondent Trading were to be shipped to Nigeria only, but the
persisted in the distribution and sole (p. 208; 228- goods were actually sent to and sold in the Philippines. A
229, Rollo), triggering petitioner's motion to cite private ploy of this character is akin to the scenario of a third
respondent's manager in contempt of court (p. person who induces a party to renege on or violate his
223, Rollo). Considering that private respondent's undertaking under a contract, thereby entitling the other
manager, Frank Sia, admitted the acts complained of, a contracting party to relief therefrom (Article 1314, New
fine of P500.00 was imposed on him but he failed to pay Civil Code). The breach caused by private respondent
the same within the five-day period provided in Our was even aggravated by the consequent diversion of
Resolution of June 21, 1989 trade from the business of petitioner to that of private
(p. 236, Rollo). respondent caused by the latter's species of unfair
competition as demonstrated no less by the sales
effected inspite of this Court's restraining order. This
Did respondent appellate court correctly agree with the
brings Us to the irreparable mischief which respondent
lower court in disallowing the writ solicited by herein
court misappreciated when it refused to grant the relief
petitioner?
simply because of the observation that petitioner can be
fully compensated for the damage. A contrario, the injury
That the exclusive sales contract which links petitioner is irreparable where it is continuous and repeated since
and the House of Mayfair is solely the concern of the from its constant and frequent recurrence, no fair and
privies thereto and cannot thus extend its chain as to reasonable redress can be had therefor by petitioner
bind private respondent herein is, We believe, beside the insofar as his goodwill and business reputation as sole
point. Verily, injunction is the appropriate remedy to distributor are concerned. Withal, to expect petitioner to
prevent a wrongful interference with contracts file a complaint for every sale effected by private
by strangers to such contracts where the legal remedy is respondent will certainly court multiplicity of suits
insufficient and the resulting injury is irreparable (3 Francisco, Revised Rules of Court, 1985 Edition, p.
(Gilchrist vs. Cuddy, 29 Phil. 542 [1915]; 4-A Padilla, 261).
Civil Code Annotated, 1988 Ed., p. 90). The liability of
private respondent, if any, does not emanate from the
WHEREFORE, the petition is hereby GRANTED. The
four corners of the contract for undoubtedly, Unisia
decision of the Court of Appeals dated January 13, 1989
Merchandising Co., Inc. is not a party thereto but its
in CA-G.R. SP No. 16019 and the Order dated October
accountability is "an independent act generative of civil
16, 1988 issued by the magistrate at the court of origin
liability" (Daywalt vs. Corporacion de PP. Agustinos
are hereby REVERSED and SET ASIDE. Let this case
Recoletos, 39 Phil. 587 [1919]; 4 Paras, Civil Code of the
be remanded to the court of origin for issuance of a writ
Philippines Annotated, 1981 10th Ed., p. 439;
of preliminary injunction upon petitioner's posting of a
4 Tolentino, Commentaries and Jurisprudence on the
bond in the sum of Fifty Thousand (P50,000.00) Pesos
Civil Code, 1986 Ed.,
to be approved by said court, to remain effective during
p. 439). These observations, however, do not in the least
the trial on the merits until final determination of the
convey the message that We have placed the cart ahead
case. The manager of private respondent. Frank Sia, is
of the horse, so to speak, by pronouncing private
hereby ordered to pay to the Clerk of Court within five (5)
respondent's liability at this stage in view of the
days from notice hereof the fine of P500.00, as
pendency of the main suit for injunction below. We are
previously imposed on him, with a warning that failure to
simply rectifying certain misperceptions entertained by
do so will be dealt with more severely.
the appellate court as regards the feasibility of
requesting a preliminary injunction to enjoin a stranger to
an agreement.
Upon issuance of the writ of preliminary injunction, the
restraining order issued on March 13, 1989 by this Court
shall be deemed automatically lifted.

SO ORDERED.