Wolverine Worldwide, Inc. v.

CA
GR. No. 78298
January 30, 1989
Facts:
On February 8, 1984, the petitioner, a foreign corporation organized and
existing under the laws of the United States, brought a petition before the Philippine
Patent Office, for the cancellation of Certificate of Registration No. 24986-B of the
trademark HUSH PUPPIES and DOG DEVICE issued to the private respondent, a
Filipino citizen.
In support of its petition for cancellation, the petitioner alleged, inter alia,
that it is the registrant of the internationally known trademark HUSH PUPPIES and
the DEVICE of a Dog in the United States and in other countries which are members
of the Paris Convention for the Protection of Industrial Property; that the goods sold
by the private respondent, on the one hand, and by the petitioner, on the other
hand, belong to the same class such that the private respondent's use of the same
trademark in the Philippines (which is a member of said Paris Convention) in
connection with the goods he sells constitutes an act of unfair competition, as
denied in the Paris Convention.
Subsequently, the private respondent moved to dismiss the petition on the
ground of res judicata, averring that in 1973, or more than ten years before this
petition was filed, the same petitioner filed two petitions for cancellation and was a
party to an interference proceeding, all of which involved the trademark HUSH
PUPPIES and DEVICE, before the Philippine Patent Office. The Director of Patents had
ruled in all three inter parties cases in favor of Ramon Angeles, the private
respondent's predecessor-in-interest.
The Court of Appeals affirmed tile above decision, finding the same to be in
accordance with law and supported by substantial evidence.
In the present case, after both parties had submitted their respective
memoranda, the Director of Patents rendered the questioned decision, DISMISSING
the petition for cancellation.
On appeal, the Court of Appeals at first set aside the Director's decision; 5
however, upon reconsideration the latter was revived.
Issue:

W/N the petition for cancellation is barred by res judicata?

Held: Yes.
Contrary to the petitioner's assertion, the judgment in Inter Partes Cases Nos.
700, 701, and 709 had long since become final and executory. That Sec. 17 of
Republic Act 166, also known as the Trademark Law, allows the cancellation of a
registered trademark is not a valid premise for the petitioner's proposition that a
decision granting registration of a trademark cannot be imbued with the character
of absolute finality as is required in res judicata. A judgment or order is final, as to
give it the authority of res judicata, if it can no longer be modified by the court
issuing it or by any other court.

In the case at bar, the decision of the Court of Appeals affirming that of the
Director of Patents, in the cancellation cases filed in 1973, was never appealed to
us. Consequently, when the period to appeal from the Court of Appeals to this Court
lapsed, with no appeal having been perfected, the foregoing judgment denying
cancellation of registration in the name of private respondent's predecessor-ininterest but ordering cancellation of registration in the name of the petitioner's
predecessor-in-interest, became the settled law in the case.
Undoubtedly, final decisions, orders, and resolutions, of the Director of
Patents are clothed with a judicial character as they are, in fact, reviewable by the
Court of Appeals and by us.
It is argued, however, that res judicata does not apply in this particular
instance because when the May 9, 1977 decision was handed down by the Director
of Patents, Executive Order No. 913 dated October 7, 1983 and the resulting
memorandum of Minister Roberto Ongpin dated October 25, 1983 had not yet been
issued.
The petitioner underscores the following specific directive contained in the
abovementioned memorandum of Minister Ongpin for the Director of Patents:
5.All pending applications for Philippine registration of signature and
other world famous trademarks filed by applicants other than their
original owners or users shall be rejected forthwith. Where such
applicants have already obtained registration contrary to the
abovementioned PARIS CONVENTION and/or Philippine Law, they shall
be directed to surrender their Certificates of Registration to the
Philippine Patent Office for immediate cancellation proceedings.
It is thus contended that despite the previous grant of registration to the
private respondent, the present petition for cancellation could still be brought, and
the same should be granted by the Director of Patents, pursuant to the
abovequoted clause. Stated otherwise, the petitioner suggests that the petition is
not barred by res judicata because while the former petitions were filed under
Republic Act 166, the present one was brought pursuant to the cited memorandum
which expressly sanctions the cancellation of registration of a trademark granted
even prior to the same memorandum.
In the first place, the subject memorandum never amended, nor was it meant
to amend, the Trademark Law. It did not indicate a new policy with respect to the
registration in the Philippines of world-famous trademarks. The protection against
unfair competition, and other benefits, accorded to owners of internationally known
marks, as mandated by the Paris Convention, is already guaranteed under the
Trademark Law. 14 Thus, the subject memorandum, as well as Executive Order No.
913, merely reiterated the policy already existing at the time of its issuance.
The aforesaid cases, involving as they were the registration of a trademark,
necessarily litigated the issue of ownership of such trademark because ownership
is, indeed, the basis of registration of a trademark. 18 Thus, Section 4 of R.A. 166
provides: ". . . The owner of a trademark, trade name or service-mark used to
distinguish his goods, business or services from the goods, business or services of

others shall have the right to register the same on the principal register. . . " Res
judicata now bars the petitioner from reopening, by way of another petition for
cancellation (the present Inter Partes Case No. 1807), the issue of ownership of the
trademark HUSH PUPPIES. Otherwise, there will never be an end to litigation.

Lim Hoa v. director of Patents

100 SCRA 214
Facts:
On April 26, 1949, the Petitioner, 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. The application was published in the Official Gazette in
its issue of February, 1953, released for circulation on April 18, of the same year. On
April 30, 1953, the Agricom Development Co., Inc., a domestic corporation, 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.
It is a fact that the family of C. Javier Advincula, since the year 1946, had
adopted and used as a trademark of said food seasoning product manufactured by
it, the pictorial representation of a hen. In 1947, the members of the Advincula
family organized the Agricom Development Co., Inc., the Oppositor in this case, and
said corporation took over the manufacture of the same food product of the
Advincula family, including the use of the brand of the pictorial representation of a
hen but adding to it the word Hen. In the year 1948, an addition was made to the
brand with the words Ve-Tsin, Hen Brand and Marca Manok, and since then, on
its food seasoning product at different times, labels were used, in different colors
but bearing the representation of a hen and the words just mentioned. So that the
application to register applicants brand, consisting of two roosters is an attitude of
combat, with the word Bantam printed above them, came along after the use and
registration of the mark or brand of the Oppositor corporation and its predecessor,
the Advincula family.
After considering the application and the opposition thereto, and after
comparing the two brands, the Director of Patents issued his order dated June 26,
1954, wherein he found and held that to allow the registration of the applicants
trademark would likely cause confusion or mistake or deceive purchasers, and he
refused registration of said trademark, under Rule 178 of the Revised Rules of
Practice in Trademark Cases, 1953. The Petitioner is now appealing said order.
Issue:
Held: Yes.

W/N the marks were confusingly similar?

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 as to cause confusion in the mind of the public
that buys the food seasoning product on the strength and on the indication of the
trademark or brand identifying or distinguishing the same. In the case of Go Tiong
Sa vs. Director of Patents, (95 Phil., 1), we had occasion to say the following:
chanroblesvirt uallawlibrary

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 or it is necessary that the infringing label should
suggest an effort to imitate. (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F.
489, 495, citing Eagle White Lead Co. v. Pflugh (CC) 180 Fed. 579). The question at issue in
cases of infringement of trademarks is whether the use of the marks involved would be likely
to cause confusion or mistakes in the mind of the public or deceive purchasers. (Auburn
Rubber Corporation vs. Honover Rubber Co., 107 F 2d 588, 590, citing Procter and Gamble
Co. vs. J. L. Prescot Co., 49 F 2d 959, 18 CCPA, Patents, 1433Pepsodent Co. vs. Comfort
Manufacturing Co., 83 F 2d 906; 23 CCPA, Patents, 124)

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 literature available, 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.
We do not see why applicant could not have stretched his imagination even a
little and extended his choice to other members of the animal kingdom, as a brand
to differentiate his product from similar products in the market. In a similar case
decided by this Tribunal wherein, although one brand consisting of the
representation of a rooster was already being used by one party, another party
wanted to register a similar brand, consisting of two roosters on a similar product,
namely, candy, this Court said:
chanroblesv irtuallawlibrary

Counsel for Defendant insists that there is no real resemblance between a picture of
one rooster and a picture of two roosters; that no person could or would be deceived by the
use by theDefendant of a trade-mark wholly distinct from that of the Plaintif; that the fact
that theDefendant used two roosters as its trademark clearly discloses its innocence of any

intent to deceive, since a comparison of the trade-mark of the Plaintif with that of
the Defendant makes apparent at once that was not intended to be an imitation of the other.
We ask, however, why, with all the birds in the air, and all the fishes in the sea, and
all the animals on the face of the earth to choose from, the Defendant company selected
two roosters as its trade- mark, although its directors, and managers must have been well
aware of the long-continued use of a rooster by the Plaintif in connection with the sale and
advertisement of his goods?

In view of the foregoing, the order appealed from is hereby affirmed, with
costs. We do not deem it necessary to discuss and rule upon the other questions
raised in the appeal.