Ipl Week 2 Final Case Digests

BOMBA NOTES 19-20
JRU LAW
IINTELLECTUAL PROPERTY LAW

CASE DIGESTS
WEEK 2

CO TIONG VS. DIRECTOR OF PATENTS
FACTS:
Application for registration of trademark “Freedom” filed by Co Tiong Sa (used on shirts) was denied.
Oppositor Saw woo Chiong holding trademark on the word “Freeman” (used on shirts, polo shirts,
undershirts, pajamas, skippers, and T-shirts) was sustained by the Director of Patents. Hence, the appeal.
ISSUE: WON the trademarks were confusingly similar such that it constitute an infringement.
HELD: YES
There is no question that if the details of the two trademarks are to be considered, many differences
would be noted. But differences of variations in the details of one trademark and of another are not
the legally accepted tests of similarity in trademarks.
It has been consistently held that the question of infringement of a trademark is to be determined
by the test of dominancy. If the competing trademark contains the main or essential or dominant
features of another, and confusion and deception is likely to result, infrigement takes place.
When a person sees an object, a central or dominant idea or picture thereof is formed in his mind.
This dominant picture or idea is retained in the mind, and the decorations or details are forgotten.
The ordinary customer does not scrutinize the details of the label; he forgets or overlooks these, but
retains a general impression, or a central figure, or a dominant characteristic.
Upon examination of the trademark of the oppositor-respondent, one will readily see that the
dominant feature is the word "FREEMAN" written in a peculiar print, slightly slanting to the right,
with a peculiarly written capital letters "FF". These dominant features or characteristics of
oppositor's trademarks are reproduced or imitated in applicant's trademark. In the first place,
the word "FREEDOM" conveys a similar idea as the word "FREEMAN". In the second place, the
style in which both capital "F" are written are similar. The print and slant of the letters are also
similar.
An ordinary purchaser or an unsuspecting customer who has seen the oppositor's label sometime
before will not recognize the difference between that label and applicant's label. He may notice some
variations, but he will ignore these, believing that they are variations of the same trademark to
distinguish one kind or quality of goods from another.

LIM HOA VS. DIRECTOR OF PATENTS
FACTS:
On April 26,1949, Lim Hoa, filed with the Patent Office an application for the registration of a
trademark, consisting of a representation of two midget roosters in an attitude of combat with the
word "Bantam" printed above them, he claiming that he had used said trademark on a food seasoning
product since April 25 of that year.
On April 30, 1953, the Agricom Development Co., Inc., opposed the application on several grounds,
among others, that the trademark sought to be registered was confusingly similar to its register mark,
consisting of a pictorial representation of a hen with the words "Hen Brand" and "Marca Manok",
which mark or brand was also used on a food seasoning product, before the use of the trademark
by the applicant.
The Director of Patents issued his order and he refused registration of said trademark, under Rule
178 of the Revised Rules of Practice in Trademark Cases, 1953. Hence, the appeal.
HELD: YES.
After a careful examination of the facts above mentioned, and after comparing the two brands, we
do not hesitate to say and to hold that there is such similarity between the two brands on the
strength and on the indication of the trademark or brand identifying or distinguishing the
same.
The danger of confusion in trademarks and brands which are similar may not be so great in the
case of commodities or articles of relatively great value, such as, radio and television sets, air
conditioning units, machinery, etc., for the prospective buyer, generally the head of the family or a
businessman, before making the purchase, reads the pamphlets and all literatureavailable, describing
the article he is planning to buy, and perhaps even makes comparisons with similar articles in the
market. He is not likely to be deceived by similarity in the trademarks because he makes a more
or less thorough study of the same and may even consult his friends about the relative-merit and
performance of the article or machinery, as compared to others also for sale.
But in the sale of a food seasoning product, a kitchen article of everyday consumption, the
circumstances are far different. Said product is generally purchased by cooks and household help,
sometimes illiterate who are guided by pictorial representations and the sound of the word
descriptive of said representation. The two roosters appearing in the trademark of the applicant
and the hen appearing on the trademark of the oppositor, although of different sexes, belong to
the same family of chicken, known as manok in all the principal dialects of the Philippines, and
when a cook or a household help or even a housewife buys a food seasoning product for the
kitchen the brand of "Manok" or "Marca Manok" would most likely be upper most in her mind and
would influence her in selecting the product, regardless of whether the brand pictures a hen or a
rooster or two roosters. To her, they are all manok. Therein lies the confusion, even deception.

MARVEX COMMERCIAL CO, INC. VS. PETRA HAWPIA & CO. AND DIRECTOR OF PATENTS
FACTS:
Petra Hawpia & Co., on October 14, 1958 filed a petition for the registration of the trademark
"LIONPAS" used on medicated plaster, with the Philippine Patent Office, asserting its continuous use
in the Philippines since June 9, 1958.
The Marvex Commercial Co., Inc., on July 24, 1959 filed an opposition thereto, alleging that the
registration of such trademark would violate its right to and interest in the trademark "SALONPAS"
used on another medicated plaster.
After due hearing, the Director of Patents in his decision of August 16, 1961 dismissed the opposition
and gave due course to the petition, stating in part that "confusion, mistake, or deception among
the purchasers will not likely and reasonably occur" when both trademarks are applied to medicated
plaster. Hence, the appeal.
HELD: YES.
It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar
in sound.
Both these words have the same suffix, "PAS", which is used to denote a plaster that adhered to
the body with curative powers."Pas, being merely descriptive, furnishes no indication of the origin of
the article and therefore is open for appropriation by anyone and may properly become the subject
of a trademark by combination with another word or phrase.
Be that as it may, when the two words are pronounced, the sound effects are confusingly similar.
And where goods are advertised over the radio, similarity in sound is of especial significance
.
"The importance of this rule is emphasised by the increase of radio advertising in which we are
deprived of the help of our eyes and must depend entirely on the ear"(Operators, Inc. vs. Director
of Patents, supra).
In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity
of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when
applied to merchandise of the same descriptive properties.

AMERICAN WIRE & CABLE COMPANY vs. DIRECTOR OF PATENTS and CENTRAL BANAHAW
INDUSTRIES
TOPIC: DOMINANCY TEST

FACTS: On 2 June 1962, Central Banahaw Industries, Inc., applied with the Director of Patents for
registration of the trademark DYNAFLEX and Device to be used in connection with electric wires, which
mark applicant allegedly had been using since 29 March 1962.
On the other hand, American Wire and Cable Co., Inc., another domestic corporation and
authorized user since 10 April 1958 of the registered trade mark DURAFLEX and Globe representation, for
electric wires, apparatus, machines and supplies, opposed the application on the ground that applicant's
use of the trade mark DYNAFLEX would cause confusion or result in mistake to purchasers intending to
buy DURAFLEX electric wires and goods, the mark being registered allegedly having practically the same
spelling, pronunciation and sound, and covering the same good, as that of the opposer.
After due hearing, the Director of Patents rendered decision holding the applicant's mark DYNAFLEX not to
be similar to the previously registered trademark DURAFLEX, as the trademarks of the parties are different
in appearance, sound and connotation.
Hence, this appeal.

ISSUE: 1) Whether or not the Dir. Of Patents is correct?
2) When is a trademark likely to confuse or cause the public to mistake one for another?
RULING:
1) NO. The Director of Patents is incorrect. Sec. 4 of RA 166 provides that the determinative factor in a
contest involving registration of trade mark is not whether the challenged mark would actually cause
confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or
mistake on the part of the buying public. In short, to constitute an infringement of an existing trademark
patent and warrant a denial of an application for registration, the law does not require that the competing
trademarks must be so identical as to produce actual error or mistake; it would be sufficient, for purposes of
the law, that the similarity between the two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it.
2) It has been consistently held that the question of infringement of a trademark is to be determined by
the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing
trademark contains the main or essential or dominant features of another, and confusion and deception is
likely to result, infringement takes place. Duplication or imitation is not necessary, nor is it necessary that
the infringing label should suggest an effort to imitate.
The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not
only are the initial letters and the last half of the appellations identical, but the difference exists only in two
out of the eight literal elements of the designations. Coupled with the fact that both marks cover insulated
flexible wires; that both products are contained in boxes of the same material, color, shape and size; that
the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a
spark or flash of electricity; that the back of both boxes show similar circles of broken lines with arrows at
the center pointing outward, with the identical legend "Cut Out Ring" "Draw From Inside Circle", no difficulty
is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser
to confuse one product with the other.
The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately forgetting that the
buyers are less concerned with the etymology of the words as with their sound and the dominant features
of the design.

ESSO STANDARD EASTERN, INC. vs. THE HONORABLE COURT OF APPEALS and UNITED
CIGARETTE CORPORATION

FACTS: Esso Standard Eastern, Inc., is a foreign corporation duly licensed to do business in the
Philippines, and engaged in the sale of petroleum products which are Identified with its trademark ESSO.
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.
Esso Standard then filed a complaint for trademark infringement against respondent UCC alleging
that etitioner 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.
UCC then respond, contending that although they are using ESSO as trademark for their cigarettes,
there can be no infringement when their products is not identical with the petitioners product.
Trial Court ruled in favor of Esso, however CA reversed its ruling saying that there was no
trademark infringement.
Hence, this petition.

ISSUE: WON, CA is correct in ruling that there was no trademark infringement
RULING: CA is affirmed. It is undisputed that the goods on which petitioner uses the trademark ESSO,
petroleum products, and the product of respondent, cigarettes, are non-competing. But as to whether
trademark infringement exists depends for the most part upon whether or not the goods are so related that
the public may be, or is actually, deceived and misled that they came from the same maker or
manufacturer.
Goods are related when they belong to the same class or have the same descriptive properties; when they
possess the same physical attributes or essential characteristics with reference to their form, composition,
texture or quality. They may also be related because they serve the same purpose or are sold in grocery
stores.
In this case, the goods are obviously different from each other with "absolutely no iota of similitude" as
stressed in respondent court's judgment. They are so foreign to each other as to make it unlikely that
purchasers would think that petitioner is the manufacturer of respondent's goods. The mere fact that one
person has adopted and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others on unrelated articles of a different kind.
Petitioner uses the trademark ESSO and holds certificate of registration of the trademark for petroleum
products, including aviation gasoline, grease, cigarette lighter fluid and other various products such as
plastics, chemicals, synthetics, gasoline solvents, kerosene, automotive and industrial fuel, bunker fuel,
lubricating oil, fertilizers, gas, alcohol, insecticides and the ESSO Gasul" burner, while respondent's
business is solely for the manufacture and sale of the unrelated product of cigarettes. The public knows too
well that petitioner deals solely with petroleum products that there is no possibility that cigarettes with
ESSO brand will be associated with whatever good name petitioner's ESSO trademark may have
generated. Although petitioner's products are numerous, they are of the same class or line of merchandise
which are non-competing with respondent's product of cigarettes, which as pointed out in the appealed
judgment is beyond petitioner's "zone of potential or natural and logical expansion" When a trademark is
used by a party for a product in which the other party does not deal, the use of the same trademark on the
latter's product cannot be validly objected to.

CONVERSE RUBBER CORPORATION vs. UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S.
EVALLE, DIRECTOR OF PATENTS
FACTS: Universal Rubber Products, Inc. filed an application with the Philippine Patent office for registration
of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers.
Petitioner Converse filed an opposition alleging that the trademark sought to be registered by respondent
will likely deceive purchasers and such will cause great and irreparable injury to the business reputation
and goodwill of their company in the Philippines.
Respondent on the other hand contends that petitioner is doing business in the USA and is not
licensed to do business in the Philippines. Also respondent alleges that the trademark used by petitioner is
different from what they are using.
Director of Patents dismissed Converse Rubber Corporation’s opposition and gave due course to
respondents application ruling that Opposer's proof of its corporate personality cannot establish the use of
the word "CONVERSE" in any sense, as it is already stipulated that it is not licensed to do business in the
Philippines, and is not doing business of its own in the Philippines. If so, it will be futile for it to establish that
"CONVERSE" as part of its corporate name Identifies its rubber shoes. Besides, it was also stipulated that
opposer [petitioner], in manufacturing rubber shoes uses thereon the trademark "CHUCK TAYLOR" and
"ALL STAR and DEVICE" and none other.
ISSUES: 1)WON the Director of Patent is correct in dismissing the opposition of Converse Rubber
Corporation
2) WON THE DIR. OF PATENTS is CORRECT IN CONCLUDING THAT CONVERSE RUBBER

HAS NO PROTECTION IN THE PHILIPPINES SINCE IT IS UNLICENSED TO DO BUSINESS IN THE
PHILIPPINES;
RULING:
1)NO. The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is imprinted in a circular
manner on the side of its rubber shoes. In the same manner, the trademark of petitioner which reads
"CONVERSE CHUCK TAYLOR" is imprinted on a circular base attached to the side of its rubber shoes.
The deteminative factor in ascertaining whether or not marks are confusingly similar to each other "is not
whether the challenged mark would actually cause confusion or deception of the purchasers but whether
the use of such mark would likely cause confusion or mistake on the part of the buying public. It would be
sufficient, for purposes of the law, that the similarity between the two labels is such that there is a possibility
or likelihood of the purchaser of the older brand mistaking the new brand for it. Even if not an the details
just mentioned were identical, with the general appearance alone of the two products, any ordinary, or even
perhaps even [sic] a not too perceptive and discriminating customer could be deceived .
The similarity in the general appearance of respondent's trademark and that of petitioner would evidently
create a likelihood of confusion among the purchasing public. But even assuming, arguendo, that the
trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner, the
likelihood of confusion would still subsists, not on the purchaser's perception of the goods but on the origins
thereof. By appropriating the word "CONVERSE," respondent's products are likely to be mistaken as
having been produced by petitioner. "The risk of damage is not limited to a possible confusion of goods but
also includes confusion of reputation if the public could reasonably assume that the goods of the parties
originated from the same source.
2) NO. A foreign corporation which has never done any business in the Philippines and which is unlicensed
and unregistered to do business here, but is widely and favorably known in the Philippines through the use
therein of its products bearing its corporate and tradename, has a legal right to maintain an action in the
Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing
the same name as the foreign corporation, when it appears that they have personal knowledge of the

existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic
corporation is to deal and trade in the same goods as those of the foreign corporation.

SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs. COURT OF APPEALS
and CFC CORPORATION

FACTS: On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for
the registration of the trademark "FLAVOR MASTER" for instant coffee.
Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and
domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the trademark of private
respondent’s product is "confusingly similar to its trademarks for coffee and coffee extracts, to wit:
MASTER ROAST and MASTER BLEND. Also, Nestle filed an opposition on the ground that the registration
would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the
purchasing public a connection in the business of Nestle, as the dominant word present in the three (3)
trademarks is "MASTER"; or that the goods of CFC might be mistaken as having originated from the latter.
Director of Patents agree with the petitioners, however CA reversed its ruling and ordered the DIR
to approve CFC’s application as the appellate court found that while the contending marks depict the same
product, the glaring dissimilarities in their presentation far outweigh and dispel any aspect of similitude.
Further ruling that, the test of similarity is to consider the two marks in their entirety, as they appear in the
respective labels, in relation to the goods to which they are attached. The mark must be considered as a
whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually
to any part of it, as what appellees would want it to be when they essentially argue that much of the
confusion springs from appellant CFC’s use of the word "MASTER" which appellees claim to be the
dominant feature of their own trademarks that captivates the prospective consumers. Be it further
emphasized that the discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he may draw his conclusion whether one is
confusingly similar to the other
Hence, this petition.
ISSUE: WON HOLISTIC TEST, RATHER THAN THE TEST OF DOMINANCY, APPLIES TO THE CASE;
RULING: The Court of Appeals applied some judicial precedents which are not on all fours with this
case. In view of the difficulty of applying jurisprudential precedents to trademark cases due to the
peculiarity of each case, judicial fora should not readily apply a certain test or standard just because of
seeming similarities. As this Court has pointed above, there could be more telling differences than
similarities as to make a jurisprudential precedent inapplicable.
In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the
Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion or deception and thus constitute
infringement. On the other side of the spectrum, the holistic test mandates that the entirety of the marks in
question must be considered in determining confusing similarity.
The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning,
since what is of paramount consideration is the ordinary purchaser who is, in general, undiscerningly rash
in buying the more common and less expensive household products like coffee, and is therefore less
inclined to closely examine specific details of similarities and dissimilarities between competing products.
This Court cannot agree with the above reasoning. If the ordinary purchaser is "undiscerningly rash"
in buying such common and inexpensive household products as instant coffee, and would therefore be
"less inclined to closely examine specific details of similarities and dissimilarities" between the two
competing products, then it would be less likely for the ordinary purchaser to notice that CFC’s trademark
FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s uses red and brown. The
application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to
notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and
common household item.

It must be emphasized that the products bearing the trademarks in question are "inexpensive and
common" household items bought off the shelf by "undiscerningly rash" purchasers. As such, if the ordinary
purchaser is "undiscerningly rash", then he would not have the time nor the inclination to make a keen and
perceptive examination of the physical discrepancies in the trademarks of the products in order to exercise
his choice.
Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks
and unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the marks in controversy as they are encountered in
the realities of the marketplace. The totality or holistic test only relies on visual comparison between two
trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative
comparisons and overall impressions between the two trademarks.

246 CORPORATION, doing business under the name and style of ROLEX MUSIC LOUNGE vs. HON.
REYNALDO B. DAWAY, MONTRES ROLEX S.A. and ROLEX CENTRE PHIL. LIMITED
G.R. No. 157216; November 20, 2003
YNARES-SANTIAGO, J.:
FACTS:Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device,
filed against petitioner 246 Corporation the instant suit for trademark infringement and damages. They alleged
that 246 Corp adopted and, since then, has been using without authority the mark "Rolex" in its business
name "Rolex Music Lounge" as well as in its newspaper advertisements as – "Rolex Music Lounge, KTV,
Disco& Party Club."
246 Corporation argued that no trademark infringement exist from the use of the mark "Rolex" considering
that its entertainment business is totally unrelated to the items catered by respondents such as watches,
clocks, bracelets and parts thereof.
ISSUE: Whether or not trademark infringement can possibly occur where the contending parties deal with
goods and services that are totally unrelated and non-competing with each other.
RULING: Yes.
Under the old Trademark Law, where the goods for which the identical marks are used are unrelated, there
can be no likelihood of confusion and there is therefore no infringement in the use by the junior user of the
registered mark on the entirely different goods. This 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,
1998.
A junior user of a well-known mark on goods or services which are not similar to the goods or services, and
are therefore unrelated, to those specified in the certificate of registration of the well-known mark is precluded
from using the same on the entirely unrelated goods or services, subject to the following requisites, to wit:
1. The mark is well-known internationally and in the Philippines.

2. The use of the well-known mark on the entirely unrelated goods or services would indicate a
connection between such unrelated goods or services and those goods or services specified in the
certificate of registration in the well known mark. This requirement refers to the 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.
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.

SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING CORP
G.R. No. 164321; March 23, 2011
PERALTA, J.:
FACTS: Petitioner filed an application for the issuance of search warrants against an outlet and warehouse
operated by respondents for infringement of trademark under Sec 155, in relation to Sec 170 of RA 8293. In
the course of its business, petitioner has registered the trademark "SKECHERS" and the trademark "S"
(within an oval design) with the Intellectual Property Office (IPO). As a result of the raid, more than 6,000
pairs of shoes bearing the "S" logo were seized.
Later, respondents moved to quash the search warrants, arguing that there was no confusing similarity
between petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes.
The RTC agreed with respondent’s view that Skechers rubber shoes and Strong rubber shoes have glaring
differences such that an ordinary prudent purchaser would not likely be misled or confused in purchasing the
wrong article. CA affirmed the ruling of the RTC.
ISSUE: Whether or not respondent is guilty of trademark infringement.
RULING: Yes.
The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause
confusion. In determining similarity and likelihood of confusion, jurisprudence has developed tests the
Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required
that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural
and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales outlets, and market segments.
In contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied
to the products, including the labels and packaging, in determining confusing similarity. The discerning eye
of the observer must focus not only on the predominant words, but also on the other features appearing on
both labels so that the observer may draw conclusion on whether one is confusingly similar to the other.
Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of
confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was purchasing the other; and (2) confusion of business
(source or origin confusion), where, although the goods of the parties are different, the product, the mark of
which registration is applied for by one party, is such as might reasonably be assumed to originate with the
registrant of an earlier product, and the public would then be deceived either into that belief or into the belief
that there is some connection between the two parties, though inexistent.
Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized "S" by respondent
in its Strong rubber shoes infringes on the mark already registered by petitioner with the IPO. While it is
undisputed that petitioner’s stylized "S" is within an oval design, to this Court’s mind, the dominant feature of
the trademark is the stylized "S," as it is precisely the stylized "S" which catches the eye of the purchaser.
Thus, even if respondent did not use an oval design, the mere fact that it used the same stylized "S", the
same being the dominant feature of petitioner’s trademark, already constitutes infringement under the
Dominancy Test.
Furthermore, respondent did not simply use the letter "S," but it appears to this Court that based on the font
and the size of the lettering, the stylized "S" utilized by respondent is the very same stylized "S" used by
petitioner; a stylized "S" which is unique and distinguishes petitioner’s trademark. Indubitably, the likelihood
of confusion is present as purchasers will associate the respondent’s use of the stylized "S" as having been
authorized by petitioner or that respondent’s product is connected with petitioner’s business.
While respondent’s shoes contain some dissimilarities with petitioner’s shoes, this Court cannot close its eye
to the fact that for all intents and purpose, respondent had deliberately attempted to copy petitioner’s mark
and overall design and features of the shoes. Let it be remembered, that defendants in cases of infringement

do not normally copy but only make colorable changes. The most successful form of copying is to employ
enough points of similarity to confuse the public, with enough points of difference to confuse the courts.

MCDONALD'S CORPORATION vs. L.C. BIG MAK BURGER, INC
G.R. No. 143993; August 18, 2004
CARPIO, J.:
FACTS: Petitioner McDonald's Corporation ("McDonald's") is a corporation organized under the laws of
Delaware, United States. McDonald's owns a family of marks including the "Big Mac" mark for its "double-
decker hamburger sandwich." McDonald's registered this trademark with the United States Trademark
Registry on 16 October 1979. Based on this Home Registration, McDonald's applied for the registration of
the same mark in the IPO. Pending approval of its application, McDonald's introduced its "Big Mac"
hamburger sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT allowed
registration of the "Big Mac" mark in the Principal Register based on its Home Registration in the United
States.
Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a domestic corporation which operates
fast-food outlets and snack vans in Metro Manila and nearby provinces. Respondent corporation's menu
includes hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the "Big Mak"
mark for its hamburger sandwiches. McDonald's opposed respondent corporation's application on the ground
that "Big Mak" was a colorable imitation of its registered "Big Mac" mark for the same food products.
Respondents admitted that they have been using the name "Big Mak Burger" for their fast-food business.
Respondents claimed, however, that McDonald's does not have an exclusive right to the "Big Mac" mark or
to any other similar mark. Respondents claimed that they are not liable for trademark infringement or for
unfair competition, as the "Big Mak" mark they sought to register does not constitute a colorable imitation of
the "Big Mac" mark. Respondents asserted that they did not fraudulently pass off their hamburger sandwiches
as those of petitioners' Big Mac hamburgers.
RTC rendered judgment finding respondent corporation liable for trademark infringement and unfair
competition. CA reversed the RTC decision finding that no colorable imitation exists.
ISSUES:Whether or not the respondents' use of the "Big Mak" mark results in likelihood of confusion.
RULING:YES.
In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the
holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion. In contrast, the holistic test requires the court to consider the entirety
of the marks as applied to the products, including the labels and packaging, in determining confusing
similarity.
The Court has relied on the dominancy test rather than the holistic test. The dominancy test considers the
dominant features in the competing marks in determining whether they are confusingly similar. Under the
dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the
adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider
more the aural and visual impressions created by the marks in the public mind, giving little weight to factors
like prices, quality, sales outlets and market segments.
The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property
Code which defines infringement as the "colorable imitation of a registered mark xxx or a dominant feature
thereof."
Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in likelihood
of confusion. First, "Big Mak" sounds exactly the same as "Big Mac." Second, the first word in "Big Mak" is
exactly the same as the first word in "Big Mac." Third, the first two letters in "Mak" are the same as the first
two letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds the same as "c" when the word "Mak"
is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is spelled "Kalookan."
In short, aurally the two marks are the same, with the first word of both marks phonetically the same, and the
second word of both marks also phonetically the same. Visually, the two marks have both two words and six

letters, with the first word of both marks having the same letters and the second word having the same first
two letters. In spelling, considering the Filipino language, even the last letters of both marks are the same.
Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the features of "Big
Mac." Applied to the same food product of hamburgers, the two marks will likely result in confusion in the
public mind.
(NOTE: Read GR No. 233073, February 14, 2018 – SC ruled that LC Big Mak Burger Inc. did not violate the
court’s Aug 18, 2014 order which held LC Big Mak liable for trademark infringement and unfair competiion
for using the “Big Mak” brand in its burgers. Evidence showed that LC Big Mak was now selling “Super Mak”
burgers and not Big Mak anymore.)

McDONALD’S CORPORATION vs.MACJOY FASTFOOD CORPORATION
G.R. No. 166115 February 2, 2007
GARCIA, J.:
FACTS:Respondent MacJoyFastfoodCororation, a domestic corporation engaged in the sale of fast food

products in Cebu City, filed with the Intellectual Property Office an application for the registration of the
trademark “MACJOY & DEVICE” for fried chicken, chicken bbq, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks under 29 and 30 of the International Classification of Goods.
Petitioner McDonald’s Corporation, a corporation duly organized and existing under the laws of the State of
Delaware, USA, filed a verified Notice of Opposition against respondent’s application claiming that the
trademark “MACJOY & DEVICE” so resembles its corporate logo, otherwise known as the Golden Arches or
"M" design, and its marks "McDonalds," McChicken," "MacFries," "BigMac," "McDo," "McSpaghetti,"
"McSnack," and "Mc," such that when used on identical or related goods, the trademark applied for would
confuse or deceive purchasers into believing that the goods originate from the same source or origin.
Respondent denied the aforementioned allegations of the petitioner and averred that it has used the mark
"MACJOY" for the past many years in good faith and has spent considerable sums of money for said mark’s
extensive promotion in tri-media, especially in Cebu City where it has been doing business long before
McDonald's opened its outlet thereat sometime in 1992; and that its use of said mark would not confuse
affiliation with the petitioner’s restaurant services and food products because of the differences in the design
and detail of the two (2) marks.
The IPO, in using the dominancy test, sustained herein petitioner’s opposition to the registration of the mark
“MACJOY & DEVICE”.
The CA, in using the holistic test, reversed and set aside the IPO decision. Herein petitioner brought the case
to SC alleging that the dominancy test should be applied in this case.
ISSUE: WON the dominancy test or the holistic test should be applied in this case.
RULING: The petition is granted. SC agrees with the petitioner that the dominancy test is proper in this case.
Applying the dominancy test to the instant case, the Court finds that herein petitioner’s "MCDONALD’S" and
respondent’s "MACJOY" marks are confusingly similar with each other such that an ordinary purchaser can
conclude an association or relation between the marks.
Both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features.For
sure, it is the prefix "Mc," an abbreviation of "Mac," which visually and aurally catches the attention of the
consuming public. Verily, the word "MACJOY" attracts attention the same way as did "McDonalds,"
"MacFries," "McSpaghetti," "McDo," etc.
Besides and most importantly, both trademarks are used in the sale of fastfood products.
Petitioner has the rightful ownership over the said marks as it was first in registering the same.

SOCIETE DES PRODUITS NESTLE, S.A. vs. MARTIN T. DY, JR.,
G.R. No. 172276 August 8, 2010
CARPIO, J.:
FACTS: Petitioner Societe Des Produits Nestle, S.A. (Nestle) is a foreign corporation organized under the
laws of Switzerland. It manufactures food products and beverages. As evidenced by Certificate of
Registration, Nestle owns the "NAN" trademark for its line of infant powdered milk products. Nestle distributes
and sells its NAN milk products all over the Philippines.
Dy, Jr. owns 5M Enterprises. He imports Sunny Boy powdered milk from Australia and repacks the powdered
milk into three sizes of plastic packs bearing the name "NANNY."
Nestle requested Dy, Jr. to refrain from using "NANNY" and to undertake that he would stop infringing the
"NAN" trademark. Dy, Jr. did not act on Nestle’s request.Nestle filed before the RTC a complaint against Dy,
Jr. for infringement.
RTC found Dy, Jr. liable for infringement. The CA reversed the decision of the RTC finding DY, Jr. not liable
for infringement, ruling that the mark NANNY is not confusingly similar to NAN. Hence, this petition for review.
ISSUE: Whether Dy, Jr. is liable for infringement.

RULING: The Supreme Court granted the petition and reinstated the decision made by the RTC.
The Court holds that the dominancy test is applicable.
Applying the dominancy test in the present case, the Court finds that "NANNY" is confusingly similar to "NAN."
"NAN" is the prevalent feature of Nestle’s line of infant powdered milk products. It is written in bold letters and
used in all products. The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, "NANNY"
contains the prevalent feature "NAN." The first three letters of "NANNY" are exactly the same as the letters
of "NAN." When "NAN" and "NANNY" are pronounced, the aural effect is confusingly similar.
NANNY and NAN have the same classification, descriptive properties and physical attributes. Both are
classified under Class 6, both are milk products, and both are in powder form. Also, NANNY and NAN are
displayed in the same section of stores — the milk section.
The Court agrees with the lower courts that there are differences between NAN and NANNY: (1) NAN is
intended for infants while NANNY is intended for children past their infancy and for adults; and (2) NAN is
more expensive than NANNY. However, as the registered owner of the "NAN" mark, Nestle should be free
to use its mark on similar products, in different segments of the market, and at different price
levels.In McDonald’s Corporation v. L.C. Big Mak Burger, Inc., the Court held that the scope of protection
afforded to registered trademark owners extends to market areas that are the normal expansion of business.
Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to
guarding his goods or business from actual market competition with identical or similar products of the parties,
but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to
lead to a confusion of source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the fieldor is in any way connected with the activities of the
infringer; or when it forestalls the normal potential expansion of his business.

MEAD JOHNSON and COMPANY vs. N. V. J. VAN DORP, LTD., ET AL., respondents.
G.R. No. L-17501 April 27, 1963
BAUTISTA ANGELO, J.:
FACTS: N. V. J. Van Dorp, Ltd. a corporation organized under the laws of Netherlands, located and doing
business at Gouda, Netherlands, filed an application for the registration of the trademark "ALASKA and
pictorial representation of a Boy's Head within a rectangular design (ALASKA disclaimed)."
Mead Johnson & Company, a corporation organized under the laws of Indiana, U.S.A., being the owner of
the trademark "ALACTA" used for powdered half-skim milk, which was registered with the Patent Office, filed
an opposition on the ground that it will be damaged by the said registration as the trademark "ALASKA" and
pictorial representation of a Boy's Head within a rectangular design (ALASKA disclaimed), used for milk, milk
products, dairy products and infant's foods, is confusingly similar to its trademark "ALACTA".
In answer to the opposition the applicant alleged that its trademark and product "ALASKA" are entirely
different from oppositor's trademark and product "ALACTA", since applicant's product covers milk, milk
products, dairy products and infant's foods which fall under Class 47 Foods and Ingredients of Foods, while
oppositor's products cover pharmaceutical preparations for nutritional needs which fall under Class 6, which
refers to Medicines and Pharmaceutical Preparations.
The Director of Patents dismissed the opposition and holding that the trademark sought to be registered does
not sufficiently resemble oppositor's mark. Hence, this present review.
ISSUE: WON both marks are confusingly similar with each other that it would deceive purchasers.
RULING: The decision of the Director of Patents is affirmed by the Supreme Court.
It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there are similarities in
spelling, appearance and sound for both are composed of six letters of three syllables each and each syllable
has the same vowel, but in determining if they are confusingly similar a comparison of said words is not the
only determinant factor. The trademarks in their entirety as they appear in the respective labels must also be
considered in relation to the goods to which they are attached. The discerning eye of the observer must focus
not only on the predominant words but also on the other features appearing in both labels in order that he
may draw his conclusion whether one is confusingly similar to the other. Having this view in mind, we believe
that while there are similarities in the two marks there are also differences or dissimilarities which are glaring
and striking to the eye as the former. Thus, we find the following dissimilarities in the two marks:
(a) The sizes of the containers of the goods of petitioner differ from those of respondent;
(b) The colors too differ;
(c) Petitioner's mark "ALACTA" has only the first letter capitalized and is written in black. Respondent's mark
"ALASKA" has all the letters capitalized written in white except that of the condensed full cream milk which
is in red.
In the petitioner's certificate of registration, it appears thatpetitioner's products are not foods or ingredients of
foods but rather medicinal and pharmaceutical preparations that are to be used as prescribed by
physicians.On the other hand, respondent's goods cover "milk, milk products, dairy products and infant's
foods" as set forth in its application for registration which fall under an entirely different class.

ACOJE MINING CO., INC. vs. THE DIRECTOR OF PATENTS
G.R. No. L-28744 April 29, 1971
FERNANDO, J.:
FACTS:Acoje Mining Co., Inc. a domestic corporation, filed an application for registration of the trademark
LOTUS, used on Soy Sauce, Class 47.The Chief trademark Examiner finally rejected the application by
reason of confusing similarity with the trademark LOTUS registered in this Office under Certificate of
Registration No. 12476 issued in favor of Philippine Refining CO., Inc., another domestic corporation. The
cited mark is being used on edible oil, Class 47."
The matter was then elevated to respondent Director of Patents whoupheld the view of the Chief Trademark
Examiner and rejected the application of Petitioner on the ground that while there is a difference between
soy sauce and edible oil and there were dissimilarities in the trademarks due to type of letters used as well
as in the size, color and design employed, still the close relationship of the products, soy sauce and edible
oil, is such "that purchasers would be misled into believing that they have a common source."
Hence, this petition for review.
ISSUE: WON petitioner's application would be likely to cause confusion or mistake on the part of the buying
public.
RULING: The answer should be in the negative. It does not defy common sense to assert that a purchaser
would be cognizant of the product he is buying. There is quite difference between soy sauce and edible oil.
If one is in the market for the former, he is not likely to purchase the latter just because of the trademark
LOTUS. Even on the rare occasions that a mistake does occur, it can easily be rectified. Moreover, there is
no denying that the possibility of confusion is remote considering the difference in the type used, the coloring,
the petitioner's trademark being in yellow and red while that of the Philippine Refining Company being in
green and yellow, and the much smaller size of petitioner's trademark.
In the language of Justice J. B. L. Reyes, who spoke for the Court in American Wire & Cable Co. v. Director
of Patents: "It is clear from the above-quoted provision that the determinative factor in a contest involving
registration of trade mark is not whether the challenging mark would actually cause confusion or deception
of the purchasers but whether the use of such mark would likelycause confusion or mistake on the part of the
buying public. In short, to constitute an infringement of an existing trade-mark patent and warrant a denial of
an application for registration, the law does not require that the competing trademarks must be so identical
as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the similarity between
the two labels, is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the
newer brand for it."
The decision of herein respondent Director of patents is reversed and petitioner’s application for registration
of its trademark LOTUS is granted.

AMERICAN CYANAMID COMPANY vs. THE DIRECTOR OF PATENTS and TIU CHIAN
G.R. No. L-23954 April 29, 1977
JUSTICE MUNOZ-PALMA
FACTS: Cyanamid filed a petition to cancel certificate of registration No. 5348 issued in favor of respondent
Tiu Chian of the latter's trademark SULMETINE used on medicine for the control of infectious coryza and
for the prevention of cold, rhinitis, roup, cecal coccidiosis and intestinal coccidiosis of chicken and other
domesticated birds.
Cyanamid claims that it is the owner of a trademark SULMET which it had used for many years in the
United States since 1946 and which was duly registered in said country and subsequently used and
registered in the Philippines.
Director of Patents rendered his decision denying the Petition for cancellation of respondent's certificate of
registration of the trademark SULMETINE. Thus, the petitioner appeal to the Supreme Court
ISSUE: Whether or not SULMETINE was copied from its trademark SULMET giving rise to a confusing
similarity between the two in violation of Republic Act 166 otherwise known as the Trade-Mark Law.
RULING: We find petitioner's submittal devoid of merit and hold that there is no infringement of trademark.
An examination of the documentary evidence submitted by the parties confirms the findings of the Director
of Patents that there are striking differences between the two labels which preclude the possibility of the
purchasing public confusing one product with the other. Said labels are entirely different in size,
background, colors, contents, and pictorial arrangement; in short, the general appearances of the labels
bearing the respective trademarks are so distinct from each other that petitioner cannot assert that the
dominant features, if any, of its trademark were used or appropriated in respondent's own. Thus, there is a
striking difference:
a. The coloring scheme: white and green vs yellow, blue, and red;
b. The pictorial representation: "CYANAMID" printed in bold and widely-spaced green letters vs top the
pictures of two roosters and in-between is the word "HENRY'S" printed in an egg-shaped enclosure
c. The printed matter on the label: "Drinking Water Solution" vs "Tablets Veterinary"
d. The clear indication of the source: "CYANAMID" printed in big widely-spaced letters at the top of the
label but at the bottom thereof the words "AMERICAN CYANAMID COMPANY, NEW YORK 20, N.Y." vs
"HENRY'S" in turn is printed clearly above the word SULMETINE and at the bottom of the label the phrase
"HENRY'S LABORATORIES PHILIPPINES"
It is quite apparent that the source of the product is predominantly indicated thereby discounting petitioner's
assertion that the SULMETINE trademark is a plain copy of its own with intent to pass respondent's article
as coming from the same source as that of petitioner's medicinal preparation.
Also, the word SULMET is derived from a combination of the syllables "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, and the addition of the syllable "INE" in respondent's label is sufficient to distinguish
respondent's product or trademark from that of petitioner. It is therefore descriptive and generic and is open
for appropriation by anyone.

FRUIT OF THE LOOM, INC. vs. COURT OF APPEALS and GENERAL GARMENTS CORPORATION
G.R. No. L-32747 November 29, 1984
JUSTICE MAKASIAR
FACTS: Petitioner, a corporation duly organized and existing under the laws of the State of Rhode Island,
United States of America, is the registrant of a trademark, FRUIT OF THE LOOM, in the Philippines Patent
Office. The classes of merchandise covered by the registration are, among others, men's, women's and
children's underwear, which includes women's panties and which fall under class 40 in the Philippine
Patent Office's classification of goods.
Private respondent, a domestic corporation, is the registrant of a trademark FRUIT FOR EVE in the
Philippine Patent Office and was issued a registration covering garments similar to petitioner's products like
women's panties and pajamas.
Petitioner filed before the lower court, a complaint for infringement of trademark and unfair
competition against the here in private respondent. Petitioner principally alleged in the complaint that
private respondent's trademark FRUIT FOR EVE is confusingly similar to its trademark FRUIT OF THE
LOOM used also on women's panties and other textile products. Furthermore, it was also alleged therein
that the color get-up and general appearance of private respondent's hang tag consisting of a big red apple
is a colorable imitation to the hang tag of petitioner.
After trial, judgment was rendered by the lower court in favor of herein petitioner. However, CA
reversed the decision of the lower court.
ISSUE: Whether or not private respondent's trademark FRUIT FOR EVE and its hang tag are confusingly
similar to petitioner's trademark FRUIT OF THE LOOM.
RULING: WE hold that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each
other as to confuse or deceive an ordinary purchaser. The ordinary purchaser must be thought of as
having, and credited with, at least a modicum of intelligence to be able to see the obvious differences
between the two trademarks in question.
In cases involving infringement of trademark brought before this Court it has been consistently held that
there is infringement of trademark when the use of the mark involved would be likely to cause confusion or
mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity.
In determining whether the trademarks are confusingly similar, a comparison of the words is not the only
determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags
must also be considered in relation to the goods to which they are attached. The discerning eye of the
observer must focus not only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar to the other.
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT. We agree
with the respondent court that by mere pronouncing the two marks, it could hardly be said that it will
provoke a confusion, as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly
different from FRUIT FOR EVE. WE do not agree with petitioner that the dominant feature of both
trademarks is the word FRUIT for even in the printing of the trademark in both hang tags, the word FRUIT
is not at all made dominant over the other words.

TAIWAN KOLIN CORPORATION, LTD. v. KOLIN ELECTRONICS CO., INC.
G.R. No. 209843, March 25, 2015
JUSTICE VELASCO JR.
FACTS: Taiwan Kolin initially filed with the Intellectual Property Office (IPO) a trademark application for the
use of “KOLIN” on a combination of goods, including colored televisions, refrigerators, window-type and split-
type air conditioners, electric fans and water dispensers which was abandoned. However, the same
application was subsequently revived its application of products under Class 9, particularly: television sets,
cassette recorder, VCD Amplifiers, camcorders and other audio/video electronic equipment, flat iron, vacuum
cleaners, cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and automatic
goods vending machine.
Respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s revived application.
As argued, the mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its “KOLIN”
mark registered on November 23, 2003, covering the following products under Class 9 of the NCL: automatic
voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down
transformer, and PA amplified AC-D.
Bureau of Legal Affairs-IPO denied petitioner’s application. the IPO Director General reversed the
decision of the BLA-IPO. Upon appeal in CA, CA reinstated BLA-IPA’s decision.
ISSUE: Whether or not petitioner is entitled to its trademark registration of “KOLIN” over its specific goods of
television sets and DVD players
RULING:
The petition is impressed with merit.
Mere uniformity in categorization, by itself, does not automatically preclude the registration of what appears
to be an identical mark, if that be the case. In fact, this Court, in a long line of cases, has held that such
circumstance does not necessarily result in any trademark infringement.
Verily, whether or not the products covered by the trademark sought to be registered by Taiwan Kolin, on the
one hand, and those covered by the prior issued certificate of registration in favor of Kolin Electronics, on the
other, fall under the same categories in the NCL is not the sole and decisive factor in determining a possible
violation of Kolin Electronics’ intellectual property right should petitioner’s application be granted. It is
hornbook doctrine that emphasis should be on the similarity of the products involved and not on the arbitrary
classification or general description of their properties or characteristics. The mere fact that one person has
adopted and used a trademark on his goods would not, without more, prevent the adoption and use of the
same trademark by others on unrelated articles of a different kind.
In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no
rigid set rules can plausible be formulated. Each case must be decided on its merits, with due regard to the
goods or services involved, the usual purchaser’s character and attitude, among others.
It cannot be stressed enough that the products involved in the case at bar are, generally speaking, various
kinds of electronic products. These are not ordinary consumable household items, like catsup, soy sauce or
soap which are of minimal cost. The products of the contending parties are relatively luxury items not easily
considered affordable. Accordingly, the casual buyer is predisposed to be more cautious and discriminating
in and would prefer to mull over his purchase. Confusion and deception, then, is less likely.
All told, We are convinced that petitioner’s trademark registration not only covers unrelated good, but
is also incapable of deceiving the ordinary intelligent buyer. The ordinary purchaser must be thought of as
having, and credited with, at least a modicum of intelligence to be able to see the differences between the
two trademarks in question.

DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION,
petitioners,vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING
INDUSTRIES, respondents. Bito, Misa& Lozada for petitioners. Reynaldo F. Singson
for private respondent.
G.R. No. L-78325, January 25, 1990
FACTS: Petitioner Del Monte Corporation is a foreign company organized under the laws of the United
States and not engaged inbusiness in the Philippines. Both the Philippines and the United States are
signatories to the Convention of Paris ofSeptember 27, 1965, which grants to the nationals of the parties
rights and advantageswhich their own nationals enjoy for the repression of acts of infringement and unfair
competition.
Petitioner Philippine Packing Corporation (Philpack) is a domestic corporation duly organized under
the laws of the Philippines. Del Monte granted Philpack the right to manufacture, distribute and sell in the
Philippines various agricultural products, including catsup, under the Del Monte trademark and logo.
Del Monte authorized Philpack to register with the Philippine Patent Office the Del Monte catsup bottle
configuration, for which it was granted Certificate of Trademark Registration No. SR-913 by the Philippine
Patent Office under the Supplemental Register. Del Monte also obtained two registration certificates for its
trademark "DEL MONTE" and its logo.
Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the
Bureau of Domestic Trade to engage in the manufacture, packing, distribution and sale of various kinds of
sauce, identified by the logo Sunshine Fruit Catsup.
The product itself was contained in various kinds of bottles, including the DelMonte bottle, which the
private respondent bought from the junk shops for recycling.
Having received reports that the private respondent was using its exclusively designed bottles and a
logo confusingly similar to Del Monte's, Philpack and Del Monte filed a complaint against the private
respondent for infringement of trademark and unfair competition.
Sunshine alleged that its logo was substantially different from the Del Monte logo and would not
confuse the buying public to the detriment of the petitioners.
RTC of Makati dismissed the complaint. It held that there were substantial differences between
the logos or trademarks of the parties.
CA affirmed RTC’s decision.
ISSUE: WON there was infringement of trademark and unfair competition.
Ruling:Yes. To arrive at a proper resolution of this case, it is important to bear in mind the following
distinctions between infringement of trademark and unfair competition.
(1) Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is the
passing off of one's goods as those of another.
(2) In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent
intent is essential.
(3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action, whereas
in unfair competition registration is not necessary.

In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear
in the respective labels must be considered in relation to the goods to which they are attached; the discerning
eye of the observer must focus not only on the predominant words but also on the other features appearing
on both labels.
The ordinary buyer does not usually make such scrutiny nor does he usually have the time to do so.
The question is NOT whether the two articles are distinguishable by their label when set side by side but
whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious
and off his guard, is such as to likely result in his confounding it with the original. The court therefore should
be guided by its first impression because the imitator will always try to create enough differences to confuse
the Court but enough similarity to confuse the public. Here, although there are particular differences, such
are only manifest when you conduct a thorough comparison.

EMERALD GARMENT MANUFACTURING CORPORATION, petitioner, vs.HON. COURT OF APPEALS,
BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY,
INC., respondents.
G.R. No. 100098, December 29, 1995
FACTS: Private respondent H.D. Lee Co., Inc., a foreign corporation organized under the laws of Delaware,
U.S.A., filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for
Cancellation of Registration No. SR 5054 (Supplemental Register) for the trademark "STYLISTIC MR. LEE"
used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under
Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation,
a domestic corporation organized and existing under Philippine laws.
Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the
Paris Convention for the Protection of Industrial Property, averred that petitioner's trademark "so
closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines, and
not abandoned, as to be likely, when applied to or used in connection with petitioner's goods, to
cause confusion, mistake and deception on the part of the purchasing public as to the origin of the
goods."
In its answer, petitioner contended that its trademark was entirely and unmistakably different
from that of private respondent and that its certificate of registration was legally and validly granted.
The Director of Patents rendered a decision granting private respondent's petition for
cancellation and opposition to registration.using the test of dominancy, declared that petitioner's
trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which
draws the attention of the buyer and leads him to conclude that the goods originated from the same
manufacturer. It is undeniably the dominant feature of the mark."
CA which in turn affirmed the decision of the Director of Patents.
ISSUE: WON respondentregistrant's trademark "STYLISTIC MR. LEE" is confusingly similar with
the petitioner's trademarks "LEE or LEERIDERS, LEE-LEENS and LEE-SURES."
RULING:
NO.For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its
own mark and for failure to establish confusing similarity between said trademarks, private respondent's
action for infringement must necessarily fail.
xxx xxx xxx
In determining whether the trademarks are confusingly similar, a comparison of the words is not the
only determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags
must also be considered in relation to the goods to which they are attached. The discerning eye of the
observer must focus not only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar to the other.
xxx xxx xxx

Applying the foregoing tenets to the present controversy and taking into account the factual circumstances
of this case, we considered the trademarks involved as a whole and rule that petitioner’s “STYLISTIC MR.
LEE” is not confusingly similar to private respondent’s “LEE” trademark.
Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word “LEE” is prominent,
the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks
become conspicuous, noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in.

GREAT WHITE SHARK ENTERPRISES, INC., Petitioner, vs. DANILO M. CARALDE, JR.,
Respondent.
G.R. No. 192294, November 21, 2012
FACTS: Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark application seeking
to register the mark "SHARK & LOGO" for his manufactured goods under Class 25, such as slippers,
shoes and sandals. Petitioner Great White Shark Enterprises, Inc. (Great White Shark), a foreign
corporation in Florida, USA, opposed the application claiming to be the owner of the mark consisting
of a representation of a shark in color, known as "GREG NORMAN LOGO" . It alleged that, being a
world famous mark which is pending registration before the BLA since February 19, 2002, the
confusing similarity between the two (2) marks is likely to deceive or confuse the purchasing public
into believing that Caralde's goods are produced by or originated from it, or are under its sponsorship,
to its damage and prejudice.
Caralde explained that the subject marks are distinctively different from one another and easily
distinguishable. When compared, the only similarity in the marks is in the word "shark" alone, differing
in other factors such as appearance, style, shape, size, format, color, ideas counted by marks, and
even in the goods carried by the parties.
Pending the inter partes proceedings, Great White Shark’s trademark application was granted
and it was issued Certificate of Registration No. 4-2002-001478 on October 23, 2006 for clothing,
headgear and footwear, including socks, shoes and its components.
BLA Director rendered a Decision rejecting Caralde's application. He found no merit in Great
White Shark's claim that its mark was famous and well-known for insufficiency of evidence.
Director General of the Intellectual Property Office (IPO), affirmed the final rejection of
Caralde's application, ruling that the competing marks are indeed confusingly similar.
CAreversed and set aside the foregoing Decision and directed the IPO to grant Caralde's
application for registration of the mark "SHARK & LOGO.
ISSUE: The court of appeals erred in ruling that the respondent's mark subject of the application
being opposed by the petitioner is not confusingly similar to petitioner's registered mark the
court of appeals erred in ruling that the cost of goods could negate likelihood of confusion
the court of appeals erred in reversing the previous resolutions of the director general and the
bla.
RULING: NO. There being no confusing similarity between the subject marks, the matter of whether
Great White Shark’s mark has gained recognition and acquired becomes unnecessary.
A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and is capable

of identifying and distinguishing the goods of one manufacturer or seller from those of another. Apart from its
commercial utility, the benchmark of trademark registrability is distinctiveness.Thus, a generic figure, as that
of a shark in this case, if employed and designed in a distinctive manner, can be a registrable trademark
device, subject to the provisions of the IP Code.
Corollarily, Section 123.1(d) of the IP Code provides that a mark cannot be registered if it is identical
with a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to
the same or closely related goods or services, or has a near resemblance to such mark as to likely deceive
or cause confusion.

In determining similarity and likelihood of confusion, case law has developed the Dominancy Test and
the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the ordinary
purchaser, and gives more consideration to the aural and visual impressions created by the marks on the
buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. In
contrast, the Holistic or Totality Test considers the entirety of the marks as applied to the products, including
the labels and packaging, and focuses not only on the predominant words but also on the other features
appearing on both labels to determine whether one is confusingly similar to the otheras to mislead the
ordinary purchaser. The "ordinary purchaser" refers to one "accustomed to buy, and therefore to some extent
familiar with, the goods in question."

PHILIPPINE REFINING CO., INC., petitioner, vs. NG SAM and THE DIRECTOR OF PATENTS,
respondents.
G.R. No. L-26676 , July 30, 1982
FACTS: The trademark "CAMIA" was first used in the Philippines by petitioner on its products in
1922. In 1949, petitioner caused the registration of said trademark with the Philippine Patent Office
under 2 certificates of registration, both issued on May 3, 1949. Certificate of Registration covers
vegetable and animal fats, particularly lard, butter and cooking oil, all classified under Class 47
(Foods and Ingredients of Food) of the Rules of Practice of the Patent Office, while the other
certificate of registration applies to abrasive detergents, polishing materials and soap of all kinds
(Class 4).
Respondent Ng Sam, a citizen residing in Iloilo City, filed an application with the Philippine
Patent office for registration of the Identical trademark "CAMIA" for his product, ham, which likewise
falls under Class 47. Alleged date of first use of the trademark by respondent was on February 10,
1959.
After due publication of the application, petitioner filed an opposition, in accordance with
Section 8 of Republic Act No. 166, otherwise known as the Trademark Law, as amended. Basis of
petitioner's opposition was Section 4(d) of said law, which provides as unregistrable:
a mark which consists of or comprises a mark or tradename which so resembles
a mark or tradename registered in the Philippines or a mark or tradename previously
used in the Philippines by another and not abandoned, as to be likely, when applied
to or used in connection with the goods, business services of the applicant, to cause
confusion or mistake or to deceive purchasers.
The parties submitted the case for decision without presenting any evidence: thereafter the
Director of patents rendered a decision allowing registration of the trademark "CAMIA" in favor of Ng
Sam. Petitioner moved for a reconsideration, but the same was denied.
ISSUE: Whether or not the product of Ng Sam, which is ham, and those of petitioner consisting
of lard, butter, cooking oil and soap are so related that the use of the same trademark "CAMIA"
on said goods would likely result in confusion as to their source or origin.
RULING: NO. 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 average
consumer. One purchasing ham would exercise a more cautious inspection of what he buys on
account of it price. Seldom, if ever, is the purchase of said food product delegated to household
helps, except perhaps to those who, like the cooks, are expected to know their business. Besides,
there can be no likelihood for the consumer of respondent's ham to confuse its source as anyone
but respondent. The facsimile of the label attached by him on his product, his business name "SAM'S
HAM AND BACON FACTORY" written in bold white letters against a reddish orange background 6,
is certain to catch the eye of the class of consumers to which he caters.
While confusion of goods can only be evident, where the litigants are actually in competition,
confusion of business may arise between non-competitive interests as well. This is true whether or
not the trademarks are registered. Sec. 16 of the Trademark Act, in referring to 'merchandise of
substantially the same descriptive properties, embraces competitive and non-competitive trademark
infringement but it is not so extensive as to be applicable to cases where the public would
not reasonably expect the plaintiff to make or sell the same class of goods as those made or
sold by the defendant. (Emphasis supplied).

In fine, We hold that the business of the parties are non-competitive and their products so
unrelated that the use of Identical trademarks is not likely to give rise to confusion, much less cause
damage to petitioner.

HICKOK MANUFACTURING CO., INC. vs. COURT OF APPEALS ** and SANTOS LIM BUN LIONG
G.R. No. L-44707 August 31, 1982
JUSTICE TEEHANKEE
FACTS:
Petitioner is a foreign corporation whose products are manufactured by Quality House Inc., the latter
pays royalty of 1 ½% of the annual net sales. Petitioner registered the trademark “Hickok” earlier and used it
in the sales of wallets, key cases, money folds, belts, men’s underwear, neckties, handkerchief, and man’s
socks. Meanwhile, Private Respondent, Santos Lim Bun Liong, used the same trademark for the sale of
Marikina Shoes.
ISSUE:
Whether or not there is trademark infringement?
HELD:
None. The Supreme Court ruled that an emphasis should be on the similarity of the products involved
and not on the arbitrary classification or general description of their properties and characteristics and that
the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption
and use of the same trademark by others on unrelated articles of a different kind.

LA CHEMISE LACOSTE, S. A. vs. HON. OSCAR C. FERNANDEZ, Presiding Judge of Branch XLIX,
Regional Trial Court, National Capital Judicial Region, Manila and GOBINDRAM HEMANDAS
G.R. No. L-63796-97 May 2, 1984
JUSTICE GUTIERREZ, JR.
FACTS:
Petitioner is a foreign corporation organized and existing under the laws of France and not doing
business in the Philippines. In 1975, hemandas & Co., a duly licensed domestic firm applied for and was
issued Registered No. SR-2225 for the trademark ‘Chemise Lacoste & Crocodile Device” by the Philippine
Patents Office for the use on t-shirts, sportswear and other garment products of the company.
The Petitioner the filed with the NBI a complaint alleging unfair competition being committed by
Hemandas and requested assistance in his apprehension and prosecution. The NBI then filed two
applications for a search warrant after investigation with the respondent court. Respondent Court granted
the request and the NBI was able to seize various goods and articles. Later, private Respondent moved to
quash the warrants alleging the its trademark was different from Petitioner’s trademark.
ISSUE:
Whether or not Petitioner’s trademark is a well-known mark is protected under the Paris Convention.
HELD:
Yes. The Supreme Court ruled it is not enough that the private respondent relied heavily on his
certificate of registration of the trademark. A certificate of registration is not prima facie evidence of the
validity of registration, of the registrant’s exclusive right to use the same in connection with the goods,
business, or services specified in the certificate.
In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our duties
and the rights of foreign states under the Paris Convention for the Protection of Industrial Property to which
the Philippines and France are parties. We are simply interpreting and enforcing a solemn international
commitment of the Philippines embodied in a multilateral treaty to which we are a party and which we entered
into because it is in our national interest to do so.

Sehwani, Incorporated vs. In n Out Burger
G.R. No. 171053 October 15, 2007
J. Ynares-Santiago
FACTS:
Respondent In-N-Out Burger Inc., is a foreign corporation organized under the laws of California,
USA., and not doing business in the Philippines, filed before the Bureau of Legal Affairs of the IPO, an
administrative complaint against the Petitioners for violation of intellectual property rights, attorney’s fees
and damages with prayer for the issuance of a restraining order or writ of preliminary inkunction.
Respondent alleged that it is the owner of the tradename “In-N-Out” and “In-N-Out Burger & Arrow
Design”, and “In-N-Out Burger Logo” which are used in its business since 1948 up to the present. These
tradenames and trademarks were registered in the US and around the world.
ISSUE:
Whether or not the Respondent has the legal capacity to sue for the protection of its Trademarks albeit it is
not doing business in the Philippines.
HELD:
Yes. The Supreme Court ruled that the Respondent has the legal capacity to sue for the protection
of its trademark even though it is not doing business in the Philippines. Article 6 and 8 of the Convention of
Paris for the Protection of Industrial Property governs the protection of well-known trademarks. It is self-
executing provisions and does not require legislative enactment to give its effect in the member country. It
may be applied directly by the tribunals and officials of each ember country by the mere publication or
proclamation of the Convention after ratification.
Moreover, Section 3 of RA 8293 provides for the right of foreign corporations to sue in trademark or
service mark enforcement action, provided that it meets the requirements under Section 3 thereof, which
are a) any convention, treaty or agreement relation to intellectual property right or the repression of unfair
competition wherein the Philippines is also a party; and b) an extension of reciprocal rights.

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BOMBA NOTES 19-20

IINTELLECTUAL PROPERTY LAW

TOPIC: DOMINANCY TEST

Hence, this appeal.

TOPIC: DOMINANCY TEST

Hence, this petition.

TOPIC: DOMINANCY TEST

2) WON THE DIR. OF PATENTS is CORRECT IN CONCLUDING THAT CONVERSE RUBBER

TOPIC: DOMINANCY TEST

1. The mark is well-known internationally and in the Philippines.

ISSUE: Whether or not respondent is guilty of trademark infringement.

FACTS:Respondent MacJoyFastfoodCororation, a domestic corporation engaged in the sale of fast food

ISSUE: Whether Dy, Jr. is liable for infringement.

BAUTISTA ANGELO, J.:

(b) The colors too differ;

Hence, this petition for review.

The petition is impressed with merit.

ISSUE: WON there was infringement of trademark and unfair competition.

xxx xxx xxx

xxx xxx xxx

G.R. No. 192294, November 21, 2012

A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and is capable

G.R. No. L-26676 , July 30, 1982

Whether or not there is trademark infringement?

JUSTICE GUTIERREZ, JR.

G.R. No. 171053 October 15, 2007

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